PTAB / Board Discretion

Discretionary denial of second petition that presented a priority date dispute not in the first petition

By Todd M. Siegel Published April 2, 2020

The Board exercised its discretion under Section 314(a) to deny institution of a second parallel petition that presented a priority date dispute not presented in the first petition.

The Board made clear that presenting an alternative argument in a second petition does not warrant filing parallel petitions: “Simply saying that the petitions present alternative arguments contemplated by the Board and are not cumulative does not constitute a sufficiently meaningful explanation.”

The Board relied, at least in part, on the November 2019 Trial Practice Guide: “the November 2019 TPG does not contemplate that whenever there is a priority dispute, Petitioner is justified in filing two petitions against the same patent.

Further, the November 2019 TPG nowhere indicates that mere alternative arguments that are different from each other constitute sufficient justification for filing multiple petitions.”

Square, Inc. v. 4361423 Canada, Inc., IPR2019-01626, Paper 14 (PTAB Mar. 30, 2020).