For months, panels at the PTAB have debated the relevance of parallel district court litigation on the PTAB's discretion under 35 U.S.C. § 314(a) to institute or deny a petition for IPR. On May 7, 2019, the PTAB designated as precedential the NHK Spring Co. v. Intri-Plex Techs. decision that denied institution under § 325(d) and § 314(a), confirming that district court litigation "nearing its final stages" is indeed one relevant factor in deciding whether to institute an IPR.
Just over one week after the PTAB designated NHK Spring a precedential opinion, the panel in E-One, Inc. v Oshkosh Corp. denied institution under § 314(a) based solely on the pending parallel district court case. In E-One, the PTAB did not analyze any of the seven General Plastic factors. Instead, the PTAB focused on pending parallel district court litigation and concluded that it presented "the same circumstances that supported denial of institution under the § 314(a) portion in NHK Spring."
In particular, the PTAB in E-One noted that the parallel district court litigation was "scheduled to conclude [in April 2020] before a final decision would be due" in an instituted IPR. Moreover, the district court had "already invested substantial resources in the Parallel District Court Case"—including granting a preliminary injunction and issuing a claim construction ruling. Here, the PTAB noted that the same claim construction standard now applies to both district court litigation and IPR proceedings.
Moreover, there was substantial overlap between the invalidity theories in the district court litigation and the IPR petition. The PTAB noted that the petition "essentially duplicate[d]" the issues being litigated in the parallel district court case, which the district court had already considered and found to "not raise a substantial question concerning validity" when it granted a preliminary injunction.
Despite the recent ruling in E-One, it remains uncertain whether NHK Spring will lead to a significant increase in denials based solely on parallel district court litigation. Several prior panels have interpreted NHK Spring more narrowly, noting that other factors were present in NHK Spring, including a § 325(d) analysis because the same prior art had previously been presented to the PTO. The panel in Ericsson Inc. v. LLC considered NHK Spring and determined that it was "unclear whether considerations under 35 U.S.C. § 314(a) alone would have supported discretionary denial of the petition in that case."
One clear takeaway from E-One is that the timing of the district court's claim construction ruling is highly relevant to the § 314(a) analysis, particularly in view of the October 2018 changes to claim construction standards in IPRs. Even prior to the designation of NHK Spring as precedential, several panels had emphasized the significance of the timing of the court's claim construction ruling. For instance, the panel in Amazon.com v. Customplay specifically noted that no claim construction hearing had been held, distinguished NHK Spring on that basis and instituted the IPR proceeding.
Going forward, if the district court has already issued a claim construction ruling prior to the filing of a petition, § 314(a) will likely present petitioners with an additional hurdle to institution. Patent owners in such circumstances should address § 314(a) in a preliminary patent owner response, emphasizing the inefficiency of resources and the stage of the district court litigation. Faced with a district court claim construction order, petitioners may be able to increase the chances of institution by separating the invalidity theories pursued in district court litigation from those presented in the petition for IPR.
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