IBM filed the first petition on May 10, 2016, and the second on September 19, 2016. The patent owner showed that IBM had knowledge of the later-asserted references as early as April 4, 2016—the date when IBM served the patent owner with invalidity contentions based on those references in a related lawsuit. Thus, the panel concluded that IBM knew of the later-asserted prior art at the time of the first filing. It also found that the five-month delay between learning of the prior art and filing the second petition weighed in favor of denial. Other factors, such as knowledge of the patent owner’s response to, and the PTAB’s institution decision on, the first petition before filing the second petition, also weighed against IBM because such knowledge helped IBM select prior art and craft arguments for its second petition.
IBM further contended that the later-asserted references were “unavailable” during the initial review because IBM planned to join a third party’s IPR of the same patent and thus was bound to that party’s substantive arguments in its first petition. However, the panel rejected this contention because it does not explain the delay between filings, and “[t]here was no requirement that Petitioner join the [third party] to the exclusion of also, or instead of, filing [a] petition” using the newly cited references.
Int’l Bus. Mach. Corp., et al. v. ZitoVault, LLC, IPR2016-01851, Paper 7 (PTAB March 20, 2017).
[Fishman (opinion), Lee, Kim]