The Director of the U.S. Patent and Trademark Office vacated and remanded a decision from the Patent Trial and Appeal Board discretionarily denying institution of an inter partes review petition. The Director concluded that court-ordered coordination between the current petitioner and the petitioner of a previous IPR—each sued by patent owner in different district courts over different accused products—did not establish a significant relationship between the parties as contemplated in the analysis for discretionary denial of institution set forth in General Plastics.
Petitioner filed an IPR challenging two claims of a patent that had already been challenged by other petitioners in two previous IPR petitions. The board had denied institution of the first of those petitions, but instituted IPR on the second. Based on those previous petitions, patent owner argued that the board should exercise its discretion to deny institution of the current IPR. The board agreed, finding that a significant relationship existed between the petitioner here and the petitioner of the previously instituted IPR. The board noted that although the two petitioners were not co-defendants in the same district court litigation in which the challenged patent was asserted, the petitioners’ joint filing of claim construction and invalidity contentions in district court suggested a significant relationship between them. The board then found that petitioner’s knowledge of the prior art in the later petition, time elapsed between petitions, and petitioner’s explanation for the elapsed time also weighed in favor of discretionary denial.
In a request for Director review, petitioner argued that the board’s denial of institution represented an abuse of discretion. The Director granted petitioner’s request for review and agreed that the current petitioner did not have a significant relationship with the petitioner of the previously instituted IPR. First, the two petitioners had different allegedly infringing products, and there was no evidence that the petitioners had any agreement on the implementation of the relevant technology in their respective products. Indeed, the petitioners were direct competitors. Second, the petitioners were defendants in different districts and were merely ordered by the district court, over their objections, to coordinate pretrial filings in a multidistrict litigation. Lastly, although the board did not base its decision on the first-filed IPR petition, which was not instituted, any relationship between that petitioner and the current petitioner would be even more tenuous and therefore would not support discretionary denial. The Director remanded to the board to render an institution decision that considered the merits of the petition.
Practice Tip: The PTAB may discretionarily deny an IPR petition if the petitioner is either the same as, or found to have a significant relationship with, the petitioner of a previously filed IPR challenging the same claims. Two defendants involved in multi-district litigation might not have a significant relationship if they sell different accused products and are merely engaged in court-ordered pretrial coordination. Nonetheless, to minimize risk of discretionary denial, a petitioner involved in multi-district litigation should avoid coordinating, or appearing to coordinate, its IPR with that of an earlier petitioner.
Ford Motor Co. v. Neo Wireless LLC, IPR2023-00763, Paper 28 (P.T.A.B. Mar 22, 2024).