PTAB Denies Petitioner’s Second IPR Because Petitioner Strategically Delayed Filing to Take Advantage of Feedback from PTAB on First IPR

Apr 21, 2017

Reading Time : 2 min

The patent owner filed its preliminary response to the first petition on May 23, 2016, and the PTAB issued its institution decision on August 15, 2016. The petitioner filed its second petition on October 7, 2016, asserting several of the same references against the same claims of the same patent. In denying institution of the second petition on grounds of fundamental fairness, the panel focused on several factors.

First, the petitioner knew of the prior art asserted in the second petition when it filed the first petition. Of the four references asserted in the second petition, three were also asserted in the first petition, and one was included in invalidity contentions filed just one day after the first petition. While not determinative, this weighed against institution of the second petition.  

Second, the panel focused on the elapsed time between the filing of each petition. The panel noted that, in waiting as long as it did, the petitioner had ample time to take advantage of the patent owner’s preliminary response and the PTAB’s institution decision in crafting the petitioner’s second petition. The panel noted that, in related district court proceedings, the petitioner indicated that taking advantage of the decision on institution for the first petition was the reason the petitioner delayed filing the second petition as long as it did. Moreover, the petitioner failed to offer any nonstrategic reasons for the delay in filing its second petition.

The panel also focused on how exactly the petitioner relied on feedback received on the first petition in crafting the second petition. For example, the decision on institution for the first petition noted deficiencies with respect to one reference. The petitioner then asserted a new reference to account for elements previously mapped to the deficient reference in its second petition. Further, where the decision on institution resulted in a favorable outcome for obviousness grounds involving two references, the petitioner expanded the challenged claims in the second petition in view of the same two references. Noting that the petitioner substantively shifted arguments presented in the second petition, the panel stated simply, “[w]e view Petitioner’s strategy—withholding additional challenges until receiving the Board’s feedback to help shape those challenges—as unfair to Patent Owner.”

Xactware Solutions, Inc., v. Eagle View Technologies, Inc. IPR2017-00025, Paper 9 (PTAB April 13, 2017).

[Baer (opinion), Moore, White]

Share This Insight

Previous Entries

IP Newsflash

October 1, 2025

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

...

Read More

IP Newsflash

September 30, 2025

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

...

Read More

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.