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PTAB Tracker

December 18, 2020

Valve Corp. v. Elec. Scripting Prods., Inc., Case IPR2019-00064, -00065, -00085, Paper 10 (“Valve II”)

Valve II provides additional guidance on application of the General Plastic factors related to discretionary denial under AIA § 314(a). The General Plastic factors are:

  1. whether the same petitioner previously filed a petition directed to the same claims of the same patent;
  2. 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;
  3. 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 Board’s decision on whether to institute review in the first petition;
  4. 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;
  5. 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;
  6. the finite resources of the Board; and
  7. 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.

 

(Paper 10 at p. 9.)

Valve II clarified two previously open questions:

(1) With respect to General Plastic factor 1, is a Petitioner that has joined an on-going proceeding considered to have previously filed a petition directed toward the same claims of the same patent?
(2) Whether application of the General Plastic factors “is not limited solely to instances in which multiple petitions are filed by the same petitioner.”

Prior to filing of the Petitions addressed in Valve II, an unrelated petitioner had challenged the same patent challenged by all three of the petitions at issue in Valve II. Valve Corp. subsequently filed a motion to join that proceeding, which was granted by the Board. Separate from that petition, Valve Corp. filed the three petitions at issue here, challenging the same claims of the same patent. Regarding the first open question, Valve II clarified that when a Petitioner joins an on-going IPR proceeding, for the purposes of evaluating the General Plastic factors, that Petitioner is considered to be in the same shoes as the original Petitioner of the previously filed, on-going IPR proceeding. In other words, for the purposes of determining General Plastic factor 1 (“whether the same petitioner previously filed a petition directed to the same claims of the same patent”), a petitioner that has joined an on-going proceeding will be considered to have previously filed a petition directed toward the same claims of the same patent. (Paper 10 at p. 9.)

Valve II further clarified that application of the General Plastic factors “is not limited solely to instances in which multiple petitions are filed by the same petitioner.” While the Board had reached a similar conclusion in prior institution decisions, the Board in Valve II expressly addresses this issue. The Board ruled that, because the two petitioners had been co-defendants in the related District Court litigation, that “there is a significant relationship between [the two petitioners] with respect to Patent Owner’s assertion of the ’935 patent.” (Id. at p. 11.) The Board considered the General Plastic factors to weigh in favor of denial of institution. With respect to factor 3 in particular, the Board found that the fact that the Board had already issued its institution decision in the first filed petition against the ’935 patent gave the Petitioner here “a substantial advantage in waiting for the preliminary response and institution decision in that proceeding before preparing these follow-on petitions,” which weighed heavily in favor of denial of institution.

Takeaways

  1. If a Petitioner is not a first party to challenge a patent at the PTAB, the Petitioner must choose between joining a previously filed IPR proceeding or filing their own IPR petition.
  2. If a Petitioner is not the first party to challenge a patent at the PTAB, the Petitioner should strive to have their petition(s) on file prior to the patent owner’s preliminary response in any IPR proceedings against the same patent initiated by similarly situated parties so as to avoid accusations of using the patent owner’s preliminary response as a “road map” for the follow-on petition.

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