By: Matt Johnson

The PTAB’s decision on whether or not to institute trial in a particular matter is discretionary.  See Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to institute an IPR proceeding”). Under 35 U.S.C. § 325(d) the PTAB may take into account and reject a petition because “the same or substantially the same prior art or arguments previously were presented to the Office.”  Because IPRs are by far the most popular flavor of PTAB post-issue patentability review, the § 325(d) decision is typically considered under the lens of prior-art unpatentability.  There, § 325(d) guideposts have been developed that include how similar the prior art asserted in the petition is to prior art previously considered by the Patent Office and whether the petitioner is bringing new evidence or significant arguments to the table to entice the Board to reconsider previous prior art determinations.  See, Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (discussed here).

But the § 325(d) analysis can be extended to non-prior art grounds of unpatentability in CBM/PGR proceedings as well.  In January 2018, Fiserv, Inc. filed a petition for CBM review of claims 1-68 of U.S. Patent No. 7,836,067 under § 101.  That patent had been asserted in the Eastern District of Texas against a number of financial institutions in  2017.  In October 2017, three months prior to Fiserv’s petition, another financial services provider petitioned for review of the ’067 patent claims under § 101.  Trial was instituted in that matter in April 2018.

In the Institution Decision, the Board considered Patent Owner’s argument that instituting a second CBM patent review, filed three months after the initial petition by another party, would unnecessarily duplicate the process of reaching the same 35 U.S.C. § 101 legal issue.  The PTAB agreed that Fiserv’s petition presents the “same or substantially the same arguments regarding the § 101 challenge.”  The Board found that the two petitions made “substantially the same arguments under Alice step 1.”  The PTAB also found that both petitions presented the same argument that the claims’ step of accessing two storage systems automatically “using generic purpose computers was well-known and does not transform the alleged abstract idea into an inventive concept.”  The PTAB also found Fiserv’s petition and the prior petition both relied on almost identical evidence to support their cases.  Noting that Fiserv did not indicate how its petition differed from the prior petition, already instituted, and that Fiserv did not file a motion for joinder, the PTAB “exercised the discretion granted under 35 U.S.C. § 325(d) to deny the Petition.”

Takeaway

This Decision serves as a reminder that parties do not have a right to be heard at the PTAB.  To successfully pursue a § 101 unpatentability challenge after another party has already petitioned for such a ground, the follow-on petitioner is advised to present new evidence and arguments from a different angle.  The second petitioner should address § 325(d) head on in their petition to identify their petition’s differences and why the PTAB should facilitate parallel § 101 proceedings.  If the second petitioner’s arguments are not really different than the first’s, a joinder motion may be a more appropriate course of action.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 225 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.