Patent Attack Strategy in Doubt Following Agency Guidance

New Patent and Trademark Office guidance discouraging simultaneous attacks on the same patent has left practitioners uncertain about using that strategy to seek administrative reviews.

The agency in July said parties filing more than one validity challenge against a patent “at or about the same time” for a Patent Trial and Appeal Board review should explain the differences between and rank them in order of importance. Filing a single petition “should be sufficient” in most situations, the agency said.

Some practitioners are worried that the PTAB may start dismissing some legitimate challenges just because parties file several petitions.

If that happens, “then they’re erring on the other side. Then they’re making it too restricted, and it should be somewhat flexible,” Marcella Bodner, intellectual property counsel at Cole Schotz P.C., said.

Patent attorneys say the agency’s guidance was spurred by Comcast Corp.'s filing six parallel petitions to challenge an interactive TV guide patent. The agency cited that challenge in its guidance.

The agency updated its trial practice guide “to provide additional guidance to parties on a variety of topics that arise in AIA trials,” and not in response to Comcast’s strategy, PTAB Vice Chief Judge Tim Fink said in an emailed statement.

“The office aims to increase the certainty, predictability, and transparency of trial proceedings,” Fink added. “Parallel petitions is one of those topics where stakeholders have indicated that more guidance would be useful.”

Only about one-third of patents challenged at the PTAB filed on or before June 30, 2017, were challenged in two or more petitions, according to a 2017 agency study.

The office acknowledged that filing more than one petition to challenge a patent may be called for in certain circumstances, such as when a patent owner asserts a large number of patent claims in litigation, or if there’s a dispute regarding priority dates that requires arguments under multiple prior art references. But the agency said challenges needing two petitions “should be rare,” and that its “unlikely” for circumstances to arise that will call for three-plus petitions for a single patent.

Practitioners say the guidance is ambiguous.

“Until we know those circumstances in which we know it’s appropriate to have more than one petition, I think there’s going to be a lot of questions,” Trenton Ward, partner at Finnegan, Henderson, Farabow, Garrett & Dunner LLP and a former PTAB judge, said.

‘Extreme Example’

The PTAB in April called for Comcast to rank its petitions challenging a Rovi Guides patent. It instituted trial on just the top one, in Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc.

“Maintaining multiple, concurrent proceedings per patent presents “a significant burden,” the board said in a filing.

The Comcast situation was an “extreme example of parallel petitions,” Bridget Smith, intellectual property litigation and transactions partner at Knobbe Martens Olson & Bear LLP, said.

The agency said in its Trial Practice Guide that in most situations, one petition should suffice, while two or more petitions “at or about the same time” might place unnecessary burden on both the board and patent owner. Parallel petitions also “could raise fairness, timing, and efficiency concerns,” the agency said in the guidance.

The idea of ranking petitions was “discussed pretty heavily” at the American Intellectual Property Law Association’s “PTAB Bench + Bar” event in June, Smith said. But she said the PTO’s guidance to rank the petitions even “if there was only two” came as a surprise to her.

“Even though it doesn’t say there’s a presumption, I think we can all assume there is, and you have to overcome that presumption, the presumption that you’ll be limited to one petition, if any,” Smith said.

The validity of 67% of patents challenged at the PTAB on or before June 30, 2017, were challenged via a single petition, the PTO said in its multiple petitions study. Another 25% of patents were challenged with two petitions, and less than 6 percent of patents were challenged with three or more petitions, the study showed.

The Trial Practice Guide updates mark a step towards “a different type of adjudication than what had previously been the case at the board,” Ward said. He said that previously the PTAB had noted that patent challengers could file a second petition to “achieve more space” for their arguments.

But the agency’s new guidance “implies you don’t just need more pages,” he said.

Conflicting Views

Attorneys say petitioners rarely used the approach cited in the guidance, and said it signals that the PTAB is targeting specific behavior.

“It’s the anti-Comcast rule, frankly. They were the ones that were abusing it,” Scott McKeown, chair of Ropes & Gray LLP’s Patent Trial and Appeal Board group, said. McKeown has represented Rovi, though not in the IPRs the agency cited in the guidance.

The PTAB guidance is letting the public know that “piling on” petitions is “not something that’s going to continue,” McKeown said. It’s “a bad look for the PTAB to accept that kind of behavior,” he said.

Retired Federal Circuit Chief Judge Randall Rader said the new guidance marks “a step in the right direction.”

“In one sense, it leaves a lot open to future explanation. But in another way, it gives flexibility that it will be applied hopefully fairly,” Rader said. “And I would hope that there’s a general awareness that the system needs to be improved, and this is an effort to do that.”

Not everyone thinks the guidance improves the system. Florian Mueller, an independent patent litigation analyst, said it’s “misguided,” because there’s “no hard evidence of widespread abuse of this process.”

It also sets the stage for gamesmanship, Mueller said, because applicants may try to get more claims in patents to increase the likelihood they survive challenges.

“This is going to reward people who manage to get weak patent claims granted by the patent office. It’s not going to be the kind of guidance that would incentivize genuine and valuable innovation,” he said.

Cole Schotz’s Bodner said the PTAB, whose rulings historically have tipped in favor of petitioners, seems to be “trying to re-balance the scales.” She said the details in the guidance aim to help the board wade through submissions.

“The PTAB is not only doing this to help patentees, I think they’re doing this to help themselves,” she said.