By Cathy Chin Eng and Matt Johnson

Relying on 35 U.S.C. § 314(a), the Patent Trial and Appeal Board has articulated its reluctance to review “follow-on” petitions challenging the validity of patents that have been previously subjected to inter partes review.  As discussed in prior posts, these rejected follow-on petitions include not only ones by the same petitioner, but also those filed by different petitioners and co-defendants.  See United Fire Protection Corp. v. Engineered Corrosion Sol’ns, LLC, Case IPR2018-00991 (PTAB Nov. 15, 2018) (Paper 10) and Valve Corp. v. Elec. Scripting Prod., Inc., Case IPR2019-00062 (PTAB April 2, 2019) (Paper 11) (precedential).

In contrast to these decisions, on July 1, 2019, the PTAB instituted inter partes review in Unified Patents Inc. v. Speakware, Inc., No. IPR2019-00495 (Paper 9).  In declining to exercise its discretion to deny institution under Section 314(a), the PTAB relied heavily on when the follow-on petition was filed in its consideration of the seven non-exclusive factors set forth in Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2019-01357 (PTAB Sept. 6, 2017) (Paper 19) (precedential).

The Petitioner, Unified Patents Inc. (“Unified Patents”), filed a single petition challenging the claims of U.S. Patent No. 6,397,186 (“the ’186 patent”).  Approximately one month before the filing of this petition, Google LLC (“Google”) filed two petitions against the ’186 patent.  The Patent Owner, Speakware, Inc. (“Speakware”) argued that the Board should deny institution under Section 314(a) because there is a significant relationship between Unified Patents and Google, whose previously-filed petitions challenged the same claims of the ’186 patent as Unified Patents’ petition.  Speakware also asserted that Unified Patents relied on the same prior art cited in Google’s petitions and therefore Unified Patents knew of the prior art at least as of the time when Google filed its petitions.

The PTAB found that institution should not be denied even assuming that the Patent Owner’s assertions, which relate to the first two General Plastic factors, were correct.  Focusing on the fact that Unified Patents’ follow-on petition was filed only about a month after Google filed its petitions, the Board found that the other five factors did not favor denying institution.  With regard to the third General Plastic factor, the PTAB found that when Unified Patents filed its petition, it had not yet received the patent owner’s preliminary response or the Board’s decision on whether to institute review of Google’s prior-filed petitions.  Therefore, this factor did not favor denying review.  Similarly, the PTAB concluded that the fourth and fifth factors, (i.e., the elapsed time between when the petitioner learned of the prior art asserted in the second petition and the filing of that petition, and whether the petitioner provided adequate explanation for the time elapsed between the filings of multiple petitions), also did not support denying institution.  In reaching this conclusion, the PTAB reiterated that Unified Patents filed its petition only one month after Google’s filings and did not have the benefit of the patent owner’s response or the PTAB’s decision for the earlier-filed petitions.  Furthermore, the PTAB found that the sixth and seventh factors, relating to efficiency considerations, favored not exercising its discretion to deny institution because United Patents filed a single petition only one month after Google’s filings.

Takeaway:  This decision highlights the importance between timely filing and successful institution of follow-on petitions.  Parties considering the submission of follow-on petitions should be very mindful that filing as soon as possible after earlier-filed petitions, particularly before the patent owner’s preliminary response or PTAB’s decision on whether to institute, is pivotal to obtaining review.

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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.