`Parted: Separate Fee Payments Do Not
`Reduce Risk of NonInstitution of
`Redundant Grounds
`
`Posted on November 13, 2014
`
`Authored by Michelle Carniaux and Michael E. Sander
`
`The PTAB has recently begun pushing back on (alleged) attempts to circumvent the PTAB’s
`policy against including “redundant grounds” in IPR trials.
`
`The PTAB’s redundancy policy is not new. Within a month of opening its doors, the PTAB
`made it clear that it will not allow an IPR petitioner to make multiple similar arguments
`challenging the validity of the same claims within an IPR petition, i.e., the PTAB will not
`entertain “redundant” grounds of invalidity raised in an IPR petition:
`
`Petitioner asserts four hundred and twenty two (422) grounds of unpatentability over
`prior art . . . averaging more than 21 grounds per claim. . . . [M]ultiple grounds, which
`are presented in a redundant manner by a petitioner who makes no meaningful
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`6/1/2015 Petitioner and His Money are Soon Parted: Separate Fee Payments Do Not Reduce Risk of NonInstitution of Redundant Grounds | IPR Blog | Kenyon & K…
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`http://interpartesreviewblog.com/petitionermoneysoonpartedseparatefeepaymentsreducerisknoninstitutionredundantgrounds/
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`distinction between them, are contrary to the regulatory and statutory mandates, and
`therefore are not all entitled to consideration.
`
`See CBM201200003, No. 7 Notice at 2 (P.T.A.B. Oct. 25, 2012). The PTAB reasoned that
`allowing a petitioner to challenge a patent with redundant arguments would frustrate
`Congress’ intent to establish the PTAB as a “just, speedy, and inexpensive” tribunal to
`resolve patent disputes. Id. at 2 (citing 35 U.S.C. § 325(b)).
`
`It has been over two years since the PTAB first refused to permit redundant IPR grounds to
`be included in an instituted trial. Since then, Petitioners have tried a variety of tactics to
`avoid having grounds be found to be “redundant.” For example, Petitioners are now more
`likely to explain exactly how one ground of invalidity “is better in some respect” than another.
`Id. at 3.
`
`Another strategy that developed, which may be viewed as simply throwing money at the
`problem, was to file multiple petitions for IPR against the same claims of a patent, with
`invalidity grounds spread across the petitions. Some petitioners may have been under the
`impression that the PTAB reviews IPR petitions independently of one another – even with
`respect to those filed by the same petitioner. Petitioners may have believed that redundancy
`would not apply across IPR petitions because a separate filing fee must be paid for each IPR
`petition, thus, resources are provided to the PTAB to ensure a speedy resolution of the trial.
`
`Despite being an initially popular, and arguably successful, strategy the PTAB appears to be
`clamping down on petitioners who file multiple IPR petitions against the same claims of the
`same patent. This past March, Canon Inc. filed three IPRs against a single patent owned by
`Intellectual Ventures. See IPR201400535, 00536, and 00537. Each petition sought review of
`all 31 claims of the patent, but relied on different prior art and grounds of invalidity. In its
`decision regarding institution, the PTAB considered the grounds of all three petitions together:
`
`In each of [the three petitions], Petitioner challenges all of the claims of the ’406 patent.
`Specifically, through no fewer than 49 grounds, Petitioner asserts multiple challenges to
`each claim of the ’406 patent across three separate petitions. Petitioner, however, does
`not address the duplicative nature of its arguments across Petitions.
`
`We note that Petitioner’s analysis does not distinguish among the three Petitions, for
`Petitioner relies on the same Carley declaration in support of all three. . . . [The] failure
`by Petitioner’s expert to explain his generic approach further convinces us that the three
`Petitions should be considered together.
`
`IPR201400535, No. 9 Institution Decision at 19 (P.T.A.B. Sep. 24, 2014). The PTAB
`initiated trial with respect to only one of the three petitions. In declining to institute trial with
`respect to the other two petitions, the PTAB stated it was not convinced that the grounds
`raised therein “add[ed] substantively” to the grounds on which the instituted trial was based.
`
`6/1/2015 Petitioner and His Money are Soon Parted: Separate Fee Payments Do Not Reduce Risk of NonInstitution of Redundant Grounds | IPR Blog | Kenyon & K…
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`http://interpartesreviewblog.com/petitionermoneysoonpartedseparatefeepaymentsreducerisknoninstitutionredundantgrounds/
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`Id. at 20.
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`In its decision on Canon’s rehearing request, the PTAB made clear that paying additional
`fees to file separate IPRs does not circumvent the PTAB’s authority to decline to institute
`trial on petitions that rely on grounds it finds to be redundant: “Petitioner’s separate fee
`payments, however, did not assure them that three separate trials would be instituted.” See
`IPR201400536, 00537, Request for Rehearing at 4 (Nov. 5, 2014).
`
`As simply throwing money at the problem appears to no longer be a viable option, Petitioners
`may need to come up with more creative strategies to get multiple, parallel bites at the
`invalidity apple.
`
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`This entry was posted in Inter Partes Review and tagged IPR, PTAB, Redundant IPR
`Grounds by iprblog@kenyon.com. Bookmark the permalink
`[http://interpartesreviewblog.com/petitionermoneysoonpartedseparatefeepayments
`reducerisknoninstitutionredundantgrounds/] .
`
`6/1/2015 Petitioner and His Money are Soon Parted: Separate Fee Payments Do Not Reduce Risk of NonInstitution of Redundant Grounds | IPR Blog | Kenyon & K…
`
`http://interpartesreviewblog.com/petitionermoneysoonpartedseparatefeepaymentsreducerisknoninstitutionredundantgrounds/
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