By Levent Herguner and Matt Johnson

The PTAB recently issued two simultaneous decisions in which it granted one IPR petition, but denied another.  Both petitions were directed to Patent Owner Tela Innovations, Inc.’s U.S. Patent No. 7,943,966 (“the ’966 patent”).  See Intel Corporation v. Tela Innovations, Inc., IPR2019-01228, Paper No. 19 (PTAB January 30, 2020); Intel Corporation v. Tela Innovations, Inc., IPR2019-01220, Paper No. 19 (PTAB January 30, 2020).  The petitions were filed by Petitioner Intel Corporation concurrently and challenged the same claims of the ’966 patent, although they referenced different prior art.  The PTAB found that Petitioner failed to establish sufficient differences between the petitions and exercised its discretion under 35 U.S.C. § 314(a) to deny institution of IPR 1220.

The PTAB had previously issued a Notice Order requiring Petitioner to provide a ranking of its petitions and a succinct explanation of their differences.  Petitioner ranked the 1128 IPR above the 1120 IPR, but still contended that both petitions merited consideration because they had material differences.  Petitioner argued that these differences were apparent with respect to prior art references, as the 1228 IPR listed a single reference while the 1220 IPR listed a combination of two references.

The PTAB did not find Petitioner’s arguments for institution of both IPRs to be persuasive.  Particularly, the PTAB was concerned that the two petitions challenged the same claims of the ’966 patent as unpatentable under 35 U.S.C. § 103.  The PTAB added that the Consolidated Trial Practice Guide (“CTPG”) provides that “one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.”  CTPG at 58-59 (citing 35 U.S.C. § 316(b)).  The PTAB determined that Petitioner failed to establish that there was an appreciable difference in how the base references addressed the claim limitations.  The PTAB noted that Petitioner had the opportunity to make its case that both petitions were necessary when ranking the parallel petitions, but failed to do so.  The PTAB also highlighted its discretion to institute an IPR pursuant to 35 U.S.C. § 314(a).  Accordingly, the PTAB denied the 1220 IPR because its institution would be inconsistent with the efficient administration of the Patent Office.

The PTAB disagreed with Patent Owner’s arguments for the denial of the 1128 IPR.  Patent Owner had argued that the “filing [of] multiple overlapping petitions conflicts with and is harmful to efficient administration by the Board.”  Patent Owner had contended that Petitioner’s filing of multiple petitions, including IPRs directed to patents other than the ’966 patent, created a “pattern of wasteful and inefficient pursuit.”  The PTAB disagreed and made it clear that the total number of patents that Petitioner challenged was not a sufficient reason to deny institution.  The PTAB added that Patent Owner failed to explain how filing a large number of petitions challenging a number of different patents supported denying institution of every petition.  Accordingly, the PTAB granted institution of the 1228 IPR.

Takeaway: The Board’s decisions reflect that petitioners should carefully consider whether filing multiple petitions against the same patent is appropriate.  Particularly, these decisions show that the Board may expect petitioners to differentiate these petitions and explain their reasoning for multiple filings.  Petitioners should ensure that they have a sufficient basis for each petition beyond the existence of different prior art references, as failure to establish this basis can result in the denial of IPRs.

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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 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.