In Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550 (PTAB March 17, 2020) (Paper 8), the PTAB denied institution of inter partes review under 35 U.S.C. § 314, exercising its discretion to deny "follow-on petitions" challenging the same patent. In particular, the PTAB applied, inter alia, an "implicit" relationship analysis to determine whether the same petitioner previously filed a petition directed to the same claims of the same patent, reasoning that the Petitioner implicitly created a "significant relationship" between it and prior petitioners by using the prior petitions to draft its own petition.
Ericsson, Inc. ("Petitioner") filed a Petition to institute inter partes review of U.S. Patent No. 7,016,676 B2 ("the '676 Patent"), which is directed to an interface-control protocol method for a radio system, asserting that claims 1, 2, and 8 are unpatentable as obvious under 35 U.S.C. § 103. Petitioner asserted that the PTAB should not exercise its discretion under 35 U.S.C. §§ 314(a) and 325(d) for the following reasons: (1) this is Petitioner's first Petition filed in connection with the '676 Patent, (2) there is no relationship between Petitioner and the prior petitioners, and (3) the instant Petition was filed promptly after learning of the cited references. In its Preliminary Response, Uniloc 2017, LLC ("Patent Owner") asked the PTAB to discretionarily deny the Petition under 35 U.S.C. §§ 314(a) and 325(d) because "the facts show undue burden, inefficient overlap, and unexplained differences across the various petitions and challenges." Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550 (PTAB March 17, 2020) (Paper 7), p. 6.
On reviewing whether the information presented in the Petition and Patent Owner's Response demonstrates a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition under 35 U.S.C. §§ 314(a), the PTAB considered the following non-exhaustive list of seven factors required in exercising its discretion to deny a petition that challenged the same patent as a previous petition (i.e., "follow-on petitions"):
- whether the same petitioner previously filed a petition directed to the same claims of the same patent;
- whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it;
- whether at the time of filing of the second petition the petitioner already received the patent owner's preliminary response to the first petition or received the PTAB's decision on whether to institute review in the first petition;
- the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition;
- whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent;
- the finite resources of the PTAB; and
- the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.
General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19), Section II.B.4.i (precedential). General Plastic has not been limited to situations where multiple "follow-on petitions" have been filed by the same petitioner. See, e.g., NetApp Inc. v. Realtime Data, LLC, IPR2017-01195 (PTAB Oct. 12, 2017) (Paper 9).
In evaluating the first factor in instances where multiple "follow-on petitions" have not been filed by the same petitioner, the PTAB will consider whether a "significant relationship" exists between the parties filing the petitions. Valve Corp. v. Elec. Scripting Prod., Inc., IPR2019-00062 (PTAB April 2, 2019) (Paper 11) (precedential). In Valve Corp., the PTAB reasoned that a "significant relationship" existed because the parties were co-defendants in the patent infringement case in the District Court and their interests were clearly aligned, including that the first petitioner was a licensee of the second petitioner, and the same set of claims were challenged. However, in the instant case, the PTAB determined that the prior petitioners were not similarly related to the instant Petitioner. Instead, the PTAB reasoned that the Petitioner implicitly created a "significant relationship" between it and the prior petitioners "by using the prior petitioners' work as a menu and picking and choosing from their work product" to draft its own petition. In doing so, the PTAB concluded that the Petitioner effectively tied together the interests of all of the petitioners. Accordingly, the PTAB found the first factor to weigh against institution of inter partes review.
After considering the remaining six factors in view of the facts in Ericsson Inc. v. Uniloc 2017, LLC, the PTAB determined that all factors weighed against institution, and consequently denied institution of inter partes review under 35 U.S.C. § 314.
Take away: In exercising its discretion to deny a petition, the PTAB broadly applies the "significant relationship" analysis here to establish the existence of such a relationship between the petitioners, indicating that a direct relationship is not required. By using a prior petition as a "roadmap" in drafting a "follow-on petition," a petitioner may implicitly create a "significant relationship" between the petitioners.
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