The Patent Trial and Appeal Board (PTAB) has denied a petitioner's request for inter partes review (IPR) finding that petitioner failed to demonstrate a reasonable likelihood of prevailing with respect to at least one challenged claim. The PTAB's decision came after a nearly identical request for post-grant review (PGR) previously filed by petitioner on the same patent had been denied by the PTAB. According to the PTAB, petitioner acknowledged purposely filing a nearly identical petition "knowing that one of the two types of proceedings must fail under the law." The PTAB further noted that petitioner had hoped for institution of both proceedings so that the PTAB could later determine which proceeding type was proper.
In declining to institute either petition, the PTAB explained that although the challenged patent was PGR-eligible, petitioner had failed to demonstrate that at least one of the challenged claims was unpatentable in view of the asserted prior art. Because petitioner's analysis in the IPR petition was "substantially similar" to the analysis in its PGR petition, the PTAB also denied institution of the IPR. The PTAB denied the IPR petition despite the different standards for PGR and IPR institution. Specifically, a PGR may only be instituted if the petitioner demonstrates "that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable." In contrast, to institute an IPR, the petitioner must demonstrate "that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition."
Even though the standards for instituting a PGR and IPR are different, the PTAB denied the IPR because the substantially similar arguments that had been made—and were previously rejected by the PTAB in the PGR—were also insufficient to satisfy the IPR institution threshold.
Practice Tip: Although the standard for instituting a PGR is different from that for instituting an IPR, the PTAB's application of such standards may not be sufficiently different—in some instances—to expect different outcomes regarding the merits of petitioner's substantive arguments.
Align Tech., Inc. v. 3Shape A/S, IPR2019-00117, Paper No. 8 (PTAB May 14, 2019)
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