On October 24, 2017, PTAB Chief Judge David Ruschke and Lead Judge William Saindon conducted a webinar covering filing statistics for IPR petition filings, and in particular how multiple petitions have fared statistically in the PTAB. They also announced three informative decisions relating to the 35 USC § 325(d) issue:
- IPR2016-01571 – Unified Patents, Inc. v. Berman
- IPR2017-00739 – Hospira, Inc. v. Genentech
- IPR2017-00777 – Cultec, Inc. v. Stormtech LLC
The slides of the October Boardside Chat can be found here.
Some of the takeaways from the October Boardside Chat are:
- The PTAB wants each petitioner to explain why it filed a subsequent IPR petition, and will be especially careful about petitions filed after a decision on institution. (See the informative decisions, above.) This is to avoid the situation where a petitioner uses a first petition as a “roadmap” to make a subsequent petition filing.
- Petitioners need to review the following seven factors and the precedential General Plastics decision (General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPRs: 2016-01357, 2016-01358, 2016-01359, 2016-01360, 2016-01361)
- whether the same petitioner previously filed a petition directed to the same claims of the same patent;
- whether at the time of filing of the first petition the petitioner knew or should have known of the prior art asserted in the second petition;
- 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;
- 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;
- 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;
- finite resources of the Board; and
- 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.
Judge Ruschke invited stakeholders to provide feedback and further questions for any other statistical information that might be of use for the patent bar to advise its clients. It was clear from the tenor of the discussion that the PTAB wanted to set the record straight on serial IPR petition practice, and to quell some the concerns raised by certain commentators about heavy-handed post-grant proceedings using multiple IPR petitions.