Practitioners are increasingly skeptical about guidance discouraging parallel patent attacks, saying that filing a single challenge would at times run the risk of sacrificing a strong argument that could be used to attack a patent in court.
The U.S. Patent and Trademark Office said in July that filing two or more administrative challenges to a patent around the same time might pose “a substantial and unnecessary burden” to the agency’s Patent Trial and Appeal Board, which hears the challenges. Yet some attorneys who practice at the PTAB say it sometimes pays off to file parallel petitions—even if it means a no-go for your challenge.
“A lot of people have not adjusted their practice,” Fred Meeker, a Banner Witcoff attorney focusing on PTAB disputes, said. Practitioners “took the practice guide as encouraging them to file only one petition. Well, if you do that, you’re not preserving your other arguments.”
The patent office asks parties filing parallel petitions to include a document explain the differences between and rank them in order of importance. The agency took this approach in a dispute involving Meeker and Banner Witcoff client Comcast Cable Communications LLC and pointed to it in its guidance.
The agency noted legitimate instances for filing multiple petitions, such as when a patent owner asserts a high number of claims in a litigation, but said such multi-pronged challenges “should be rare.” PTAB challenges often serve as responses to infringement lawsuits.
“You’re almost filing a parallel petition, not because you think it’ll be granted, but by not having it be instituted by the board, you are preserving the right to raise all the art and grounds in the second petition” in a federal court action, Timothy Getzoff, a Holland & Hart LLP patent litigator, said. “You’re almost doing it defensively.”
Practitioners say the parallel petition guidance can pose a problem for patent validity challengers because of inter partes review estoppel law. After an IPR concludes, the petitioner is unable to raise in district court any arguments that they “raised or reasonably could have raised” with the PTAB, according to the law.
The “reasonably could have raised” language has made it difficult to determine whether to file an additional challenge to a patent, practitioners say.
“If I’m going to file one petition only because I think it’s a waste of time to file two, and it came out later in litigation I was aware of other prior art and chose not to present it, courts have found you could have reasonably raised it and didn’t try,” Getzoff said.
Haug Partners LLP in August used the “reasonably could have raised” argument in asking the PTAB to institute two petitions challenging a Jaguar Land Rover Limited patent on behalf of its client, Bentley Motors Limited. The board’s decision is pending.
The law firm noted in its petition that estoppel on reasonably could have raised grounds is “being aggressively asserted in, and accepted by, the district courts” following the U.S. Supreme Court’s 2018 decision in SAS Institute Inc. v. Iancu, which requires the PTAB to institute every part of a validity challenge if it decides to review a patent.
After SAS, “several district court cases that found estoppel for invalidity positions that were not actually raised in a petition, but ‘reasonably could have been raised’ because the prior art was available to the challenger,” Getzoff said.
“A challenger may choose to file parallel petitions with all the available prior art and invalidity combinations, and not worry so much if all the parallel petitions get rejected, because arguments in a rejected petition would not be estopped,” Getzoff said.
Haug Partners argued its client Bentley must put forth all “well-grounded bases” for invalidating the Jaguar patent’s claims, otherwise it risks being estopped in district court.
“Petitioner needs more than the allotted 14,000 words in one petition to present a thorough analysis of each ground in this case,” the law firm wrote.
Bites at Apple
The application of estoppel is a developing area of the law, Choate Hall & Stewart LLP patent attorney Stephanie Schonewald said, and the filing of parallel petitions in a defensive matter “does have some legs.”
“It is a risk, if you tried to hold back any arguments or references, for later running those arguments or grounds in district court. In fact, it is likely you will be estopped from running those positions,” she said.
Yet if a party runs those grounds in parallel petitions, and one is instituted and the other isn’t, they increase the chances they’ll be able to run the denied petition’s grounds in court, Schonewald said.
“This seems contrary to what the intent of the statute was, which was to limit the number of bites at the apple that petitioners got at a patent, not encourage them to take more bites,” she said.
Not everyone advises parallel petitioning for preserving arguments.
Instead of filing defensively, Sheppard Mullin Richter & Hampton LLP patent attorney Harper Batts recommends coming to the PTAB with “the best art you have with the most straightforward argument you have.”
Rather than putting four or five grounds in one or two petitions “to try to preserve arguments, you are better off not cluttering your IPRs with weaker grounds.”
“You should be explaining the best stuff for the PTAB and not trying to preserve,” Batts said.