By Pranita Dhungana and Matt Johnson –
The Patent Trial and Appeal Board (“PTAB”) recently denied institution in an inter partes review (“IPR”) where Petitioner later filed a parallel petition against the same claims of the same patent. Shenzhen Root Tech. Co., Ltd. v. Chiaro Tech. Ltd., IPR2024-00953, Paper 18 (PTAB Dec. 16, 2024).
Petitioner filed the first petition on May 31, 2024. On July 22, 2024, Petitioner requested administrative dismissal of this petition in favor of a new petition, asserting that it would be “best to just hit the reset button” with an updated petition with additional information. Before the Board decided on the dismissal request and before Patent Owner filed its Preliminary Response, Petitioner filed a parallel petition against the same claims of the same patent.
The PTAB denied the first petition, while it continues to evaluate the second. In denying institution of the first IPR, the Board cited to the Consolidated Trial Practice Guide (“CTPG”), which states that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG at 59. The CTPG further states that “[t]wo or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. (citing 35 U.S.C. § 316(b)).
According to the CTPG, a petitioner filing parallel petitions should identify: (1) a ranking of the petitions in the order in which it wishes the Board to consider the merits, and (2) a succinct explanation of the differences between the petitions, and why the differences are material. Id. at 59–60.
Although Petitioner ranked the later-filed petition above the first petition, Petitioner argued that both petitions were “meritorious and justified.” Petitioner pointed out that receiving Patent Owner’s infringement contentions led to the finding of a new reference, which allegedly illustrated the exact features that the examiner had believed to be missing from prior art, thus arguing that the parallel petitions had material differences. Additionally, Petitioner argued that multiple petitions were reasonable here because of the volume of claims (46). Petitioner further argued that it rapidly filed the parallel petition before Patent Owner had filed its Preliminary Response in the first proceeding.
The Board was not persuaded by Petitioner’s arguments. Acknowledging Petitioner’s own stated preference for the later-filed petition, including Petitioner’s request to dismiss the first proceeding, the Board found that Petitioner had not shown that parallel petitions were warranted. The Board emphasized that “[t]he mere fact that different references are asserted in this proceeding and the [later-filed] IPR is not justification for a parallel petition under the circumstances present here.” The Board thus denied institution in favor of evaluating institution in the later-filed IPR to reduce any unnecessary burden on the Board and Patent Owner.
Takeaway: This decision highlights the significance of thorough preparation before filing an IPR because the opportunity for parallel petitions may not exist even if a new reference is later discovered. Petitioners should put their best case forward in their initial filing.
Matthew Johnson
Latest posts by Matthew Johnson (see all)
- Federal Circuit Remands Based On Inadequate Explanation - February 11, 2025
- No Need to Show Reasonable Expectation of Success Regarding Inherent Property - February 6, 2025
- Similar Claims in Prior IPR Petition Leads to Denial - January 28, 2025