PTAB / Board Discretion

Joining an earlier IPR proceeding may impact your ability to file another IPR

By Deakin T. Lauer Published July 5, 2018

In IPR2018-00347, the Board exercised its discretion and denied institution of Honda’s petition against U.S. Patent No. 7,154,200, assigned to Intellectual Ventures. The Board applied the seven, non-exhaustive factors set out in General Plastics (IPR2016-01357; PTAB May 4, 2016) and was ultimately “swayed” by the 1st and 3rd factors, finding that Honda “chose to file two separate petitions, and the Petition in this case overlaps the other insofar as it relies on the same reference.”

The seven General Plastic factors are listed below:

1. whether the same petitioner previously filed a petition directed to the same claims of the same patent;
2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it;
3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition;
4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition;
5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent;
6. the finite resources of the Board; and
7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.

Regarding the 1st factor, Honda had argued that it was not a petitioner in the earlier IPR proceeding, since it merely sought joinder after the petition was filed. However, the Board found that even if Honda was not initially a petitioner, it became a petitioner after its motion for joinder was granted. Regarding the 3rd factor, the Board noted that the grounds in the second petition “mimic positions” from the earlier petition, suggesting that Honda used the earlier proceeding as a “roadmap to improve” its position in the second petition.

This decision illustrates one of the potential downsides to joinder, which is the possible restriction of your ability to file a separate IPR petition. In cases where the original petition is strong, this may be an acceptable risk. However, if there are doubts about the strength of the original petition, it may be best to forego joinder to increase your chances of institution in the second petition.