By Simon Maxwell* and Matt Johnson –
On March 15, 2022, Facet Technologies, LLC (Plaintiff/Patent Owner) filed an infringement suit against LifeScan, Inc. (Defendant/Petitioner) in U.S. District Court for infringement of U.S. Patent No. 8,840,635 (the ’635 patent). See Facet Technologies, LLC v. LifeScan, Inc., C.A. No. 22-cv-01717 (C.D. Cal.). The ’635 patent relates to the field of lancets and lancing devices for blood sampling and testing. Facet is currently asserting claims 6, 8, 14, and 18 against LifeScan in the District Court case.
On March 20, 2023, LifeScan filed a Petition for Inter Partes Review (Case No. IPR2023-00712) of claims 1–3, 5–8, 14, and 16–18 of the ’635 patent (“the ’712 Petition”), and concurrently filed another IPR Petition (Case No. IPR2023-00713) challenging claims 1, 4, and 9–15 of the ’635 patent on different grounds (“the ’713 Petition”). To address the need for two separate petitions, the Petitioner also filed a Ranking and Explanation for Two Petitions (“the Ranking”), which included a request that the PTAB consider the ‘713 Petition second to the ’712 Petition.
In the Ranking, the Petitioner first argued that the second petition was warranted because the ’713 petition challenged claims a subset of claims that required an “open loop” feature, while the ’712 petition challenged the claims did not. The ’713 petition thus required using “different primary references and different obvious combinations” thereof, and fitting all of that into a single petition was “not feasible”. The Petitioner also argued that, by submitting only the ’712 petition, the Petitioner risked surrendering its right to ever challenge the ’635 patent’s open-loop claims in an IPR proceeding, reasoning that they would either be estopped under 35 U.S.C. 315(e) or discretionarily denied for “non-merits-based” reasons.
In response to the IPR Petitions, Facet filed Preliminary Responses to each on June 28, 2023, as well as a response to the Petitioner’s Ranking, which argued that no exceptional circumstances existed to warrant the rare granting of two petitions on the same patent. The Patent Owner showed that the claims are “not lengthy”, with only 11 unique claims being challenged over the two petitions and averaging only 11 lines per claim. Facet further noted that “there was nothing unusual is the complexity of the ’635 Patent’s claims or the technology of the challenged patent and art that would distinguish it from many cases where one petition is sufficient.” The Patent Owner also stated that no open-loop claims were being asserted in the parallel district court case, and it was thus unclear as to how the Petitioner would be “surrendering its rights” if it did not challenge the open loop claims now.
On September 1, 2023,the PTAB granted institution of IPR2023-00712 while denying institution of IPR2023-00713. In their Decision, the Panel agreed with the arguments put forth by the Patent Owner, finding that the Petitioner provided no additional explanation or support to show why “different primary references” were required or why presenting its arguments in a single petition was “not feasible” which, if anything, neglected the significant overlap in the claims challenged and issues presented between the two petitions.
The Panel also rejected the Petitioner’s argument regarding the potential forfeiture of future rights to challenge patentability, stating “[i]f we were to adopt Petitioner’s logic, we would be obligated to simply presume a second petition challenging different or additional claims of the same patent is always warranted because there might be some reason why, in the future, a petition filed by the same petitioner could be discretionarily denied. We decline to adopt such an approach because it is neither reasonable nor consistent with the CTPG.”
In support of their decision to grant institution of IPR2023-00712, however, the Panel rejected the Patent Owner’s arguments that institution should be denied under a Fintiv analysis, finding that the Petitioner’s Sotera stipulation “complies with our binding guidance” and they thus “decline to exercise [their] discretion under § 314(a) to deny institution of inter partes review.”
Takeaway: The word limits of IPR filings and the PTAB’s reluctance to grant multiple petitions challenging a single patent may force tough choices on parties on what unpatentability grounds to assert at the PTAB.
* Simon is a Legal Intern in Jones Day’s Washington Office.
Matthew Johnson
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