By David Linden and Dave Maiorana –
On December 6, 2024, Comcast Cable Communications, LLC (“Comcast”) filed three separate petitions for inter partes review (“IPR”) of U.S. Patent No. 9,866,438 (“the ’438 Patent”), which is assigned to Entropic Communications, LLC (“Entropic”). Comcast had previously filed two separate petitions for IPR of U.S. Patent No. 10,135,682 (“the ’682 Patent”), which is a continuation of and has similar claims as the ’438 Patent. The PTAB denied each of the petitions challenging the ’682 Patent after considering each cited reference and the limitations of the challenged claims. Additionally, the ’682 Patent is the subject of litigation in a parallel district court case involving Entropic and Comcast, and in that case Entropic filed a motion for leave to amend and supplement its complaint to include the ’438 Patent. The ’682 and ’438 Patents are also asserted in another district court case involving Cox Communications.
Entropic urged the PTAB to deny the petitions. Entropic emphasized that the petitions largely rely on references and arguments already considered, either during prosecution of the ’438 Patent or by the PTAB during the previous IPRs challenging the “closely related” ’682 Patent. Entropic asserted that Comcast’s approach constituted an improper attempt at a “third, fourth, and fifth bite at the apple.” Entropic further argued that the “serial-filing strategy” unfairly provided Comcast with a roadmap of its and the PTAB’s analysis of critical issues. Comcast countered that the ’438 and ’682 Patent are distinct patents, and therefore the PTAB’s precedent regarding serial or parallel petitions does not apply. Comcast further contended that any perceived advantage it had was the result of Entropic’s “own serial litigation tactics,” including the later request for permission to add the ’438 Patent to its complaint in the parallel district court case.
The PTAB denied institution of each IPR, citing “the presence of multiple parallel proceedings and the avoidance of inconsistent outcomes.” The PTAB explained that it disfavored the filing of multiple petitions challenging the same patent and concluded that “[i]t is not an efficient use of Board resources to consider the Petitions under these circumstances. Because there are multiple ongoing district court proceedings, discretionary denial of the Petitions reduces the chances of duplicative workloads and inconsistent outcomes.”
Takeaway
Parties should consider consolidating arguments and petitions challenging the same or related patents, if possible. Duplicative efforts and the possibility of inconsistent outcomes may weigh in favor of discretionary denial.
David Maiorana