By Carl Kukkonen –
On December 14, 2021, the PTAB instituted Post-Grant Review (PGR) for certain claims of U.S. Pat. No. 10,855,671 (the ‘671 Patent) in Netskope, Inc. v. Bitglass, Inc., PGR2021-00091 while, on the same date, denying institution of a PGR for different claims of the ‘671 in Netskope, Inc. v. Bitglass, Inc., PGR2021-00092. The ‘671 patent application is directed to secure access to cloud-based application programs through the validation of single-sign-on requests.
The ‘00092 petition identified numerous related matters including Netskope, Inc. v. Bitglass, Inc., No. 3:21-cv-00916-EMC (N.D. Cal. Feb. 5, 2021) which related to the ‘671 patent, PGR2021-00091, which, as noted above, also challenged claims of the ’671 patent, and IPR2021-01045 and IPR2021-01046, which challenged claims of U.S. Patent No. 10,757,090 which is related to the ’671 patent.
Claims 1, 2, 4-10, and 12-16 were challenged in the ‘091 petition and claims 17-20 and 22-24 were challenged in the ‘092 petition. In the latter petition, Petitioner put forward eight separate grounds of unpatentability of the challenged claims.
In denying institution, the Panel noted that “Petitioner has provided us with no explanation as to why multiple petitions are necessary here, despite our guidance in the CTPG [Consolidated Trial Practice Guide], which states that such an explanation should be provided at the time the multiple petitions are filed” (page 22).
The Panel continued: “[W]e do not discern, based on our own review of the petitions, any reason why one petition would not have been sufficient to challenge the claims of the ‘671 patent, given the substantial overlap in the subject matter of the claims. The ‘671 patent has three independent claims… Claim 1 is written as a method claim, claim 9 is written to cover ‘one or more non-transitory computer-readable storage media’ storing instructions of the method of claim 1, and claim 17 is written as a system implementing the method of claim 1…. The claims depending from these independent claims recite similar subject matter. As Patent Owner argues, [the expert] testimony is repetitive, often referencing analysis directed to claim 1 and its challenged dependent claims in analyzing claim 17 and its challenged dependent claims” (pages 22-23).
In summary, it appears that the failure of the Petitioner to include, upon filing, an explanation of the need for multiple petitions in combination with (i) common prior art being used in the two petitions and (ii) the determination that the claims were not so detailed or specific as to warrant multiple petitions were major factors for the Panel to ultimately deny institution.
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