Notably, the patent owner did not respond to the petitioner’s argument or otherwise address the issue in its preliminary response, but the board considered whether parallel petitions were necessary nevertheless. Quoting from its Consolidated Trial Practice Guide, the board first emphasized “that in most cases, ‘one petition should be sufficient to challenge the claims of a patent.’” But as the board further noted, “the Guide also ‘recognizes that there may be circumstances in which more than one petition may be necessary, including for example, when the patent owner has asserted a large number of claims in litigation.’” The patent owner, though, had asserted only 12 claims in the district court case—which, according to the board, was not “an extraordinary number.”
However, those 12 claims involved “42 limitations in means-plus-function format.” The board observed that this would require claim construction pursuant to 37 C.F.R. § 42.104(b)(3), under which the petitioner would have to identify, for each of the twelve claims, “the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” The board thus concluded that “[g]iven the requirements in [the] rules for challenging means-plus-function claim limitations and in the absence of argument or comment from Patent Owner, [it would] accept Petitioner’s argument that two petitions are necessary in this case.”
Practice Tip: The board’s ruling demonstrates that even where a patent owner has asserted a seemingly limited number of claims in a co-pending district court case, the number and nature of the limitations contained within those claims still may warrant multiple IPR petitions. At the same time, the board’s emphasis on “the absence of argument or comment from Patent Owner” suggests that the board might have reached a different result had the patent owner proactively opposed the need for parallel IPR proceedings. Both petitioners and patent owners, therefore, should keep in mind that just because there is a large number of claims or claim limitations at issue does not necessarily mean the board will find multiple petitions appropriate.
Case: DJI Europe BV v. Daedalus Blue, LLC., IPR2020-01474, Paper 14 (PTAB Feb. 12, 2021)