By Amanda Price* and Matt Johnson –
In recent decision 3M Company v. Bay Materials, the Board denied 3M Company’s (“Petitioner”) second Petition for inter partes review (“Second Petition”) after exercising its discretion under § 314(a) and finding that each of seven factors from the PTAB Consolidated Practice Guide favored denial. 3M Company v. Bay Materials, LLC, No. IPR2023-00243, Paper 8 at 6-10 (P.T.A.B. July 7, 2023).
The Second Petition challenged Bay Material’s (“Patent Owner”) ‘263 patent. Petitioner filed the Second Petition almost five months after its first – not only challenging the exact same claims as its first Petition, but also filing after Patent Owner already filed its Preliminary Response to Petitioner’s first Petition. Id. at 2, 4–6.
The Board found that the first factor enumerated by the PTAB Consolidated Practice Guide, whether “the same petitioner previously filed a petition directed to the same claims of the same patent,” favored denial. The Second Petition both challenged the exact same claims as the first Petition and was filed by the same petitioner. Id. at 6, 8.
The second factor, 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,” also favored denial. Each prior art reference in the Second Petition was “known or quickly available” to the Petitioner “well before the filing” of the first Petition. Id. at 7, 9.
Likewise, the third factor, “whether at the time of filing 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,” favored denial because Petitioner had already received Patent Owner’s Preliminary Response before filing the Second Petition. Id. at 7, 9.
Factors four and five, assessing the “length of time … elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition,” and whether the petitioner provided adequate explanation for such delay, supported denial because the Petitioner had an unexplained five-month delay between the two petitions. Id. at 7, 10.
The Board underscored the general rule that the PTAB views “multiple, staggered petitions that challenge the same patent claims as ‘unfair to patent owners and … an inefficient use of the inter partes review process.’” Id. at 10 quoting Prelim. Resp. 25. The Board found that factors 6 and 7, which account for the “finite resources of the Board,” and the statutory requirement to “issue a final determination not later than 1 year after the date on which the Director notices institution of review,” favored denial because “Petitioner could have reasonably raised grounds in the earlier petition or on a second petition filed concurrently.” Id. at 7, 10.
Takeaways: When assessing whether to grant a “follow-on” petition for an IPR challenging the same patent, the Board will assess many factors. Id. at 6. The Board is unlikely to grant a second, staggered petition filed on the same patent challenging identical claims as the first. Id. at 8. Petitioners who file “follow-on” petitions should take care to provide a thorough explanation for their delay using the Practice Guide factors. Id. at 10.
* Amanda was a Summer Associate in Jones Day’s Cleveland Office.
Matthew Johnson
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