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Patent Board Marks Precedential Two Decisions Denying Review (1)

May 7, 2019, 7:32 PMUpdated: May 7, 2019, 9:25 PM

The U.S. Patent and Trademark Office has designated as precedential two patent board decisions refusing to hold administrative trials on patent challenges.

The decisions join nine others deemed precedential by the PTO’s Patent Trial and Appeal Board in 2019. The board last year changed its process for precedential designations, leading to an increase.

Both decisions marked precedential May 7 denied instituting inter partes reviews, or trial proceedings conducted by the board to review one or more claims of a patent based on prior art, such as earlier patents.

The decisions “trend toward increasing the standard for institution for petitioners, and are ultimately likely to result in fewer petitions with more parties joined together from the outset in a given petition,” according to Kayvan Noroozi, founder of Noroozi P.C., who’s not affiliated with the newly precedential cases.

In Valve Corp. v. Elec. Scripting Prods., Inc., the board denied Valve Corporation’s attempt to institute a review of a wearable tech patent via three different petitions. The PTAB agreed with Electronic Scripting Products Inc.'s argument that Valve’s attempt was an unfair follow-on to an earlier petition from HTC Corporation, which Electronic had sued alongside Valve for patent infringement in district court.

In denying the review, the PTAB applied factors set forth in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, which helps in determining whether to deny review of a patent challenged in a prior petition.

“When different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors,” the board said in denying review.

The Valve decision “resolves a sort of inconsistency between two lines of board decisions,” Noroozi said. It also moves the board “in favor of finding non-institution in the face of serial petitions when a patent owner sued multiple parties, and those defendants tried to file multiple petitions in a staggered fashion,” he said.

In the second decision designated precedential May 7, NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., the PTAB declined to review a patent related to computer disk drive hardware. The board applied factors set forth in Becton, Dickinson and Company v. B Braun Melsungen AG in determining whether to deny review when multiple proceedings involve the same patent.

The board, after applying the factors in Becton, found that instituting review would be an “inefficient use” of its time and resources, as the parties were involved in a related district court lawsuit. A board review would have the same arguments, prior art references, and claim construction standards as the court case, the board determined.

Intri-Plex had argued that NHK Spring effectively repackaged and restyled the patent examiner’s arguments during patent prosecution, or the application process, using the same prior art that the examiner used.

“I think NHK rightly makes precedential that we can’t simply ignore the fact that there was already a prosecution,” Noroozi said. “It presents a further point of consideration for petitioners before they file an IPR to decide whether we have something new here, or are we at risk of rehashing the same issues that came up during examination.”

To contact the reporter on this story: Ian Lopez in Washington at ilopez@bloomberglaw.com

To contact the editor responsible for this story: Keith Perine at kperine@bloomberglaw.com