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`Tallying Repetitive Inter Partes Review Challenges
`
`By Steven Carlson and Ryan Schultz (September 14, 2018, 5:09 PM EDT)
`
`How many bites at the apple does the Patent Trial and Appeal Board allow? That is,
`are parties limited to a single invalidity challenge to a patent claim in inter partes
`review, or are parties able to file serial challenges against a claim? While the
`statutes governing this important question may be open to interpretation on this
`fundamental question, the PTAB has adopted a decidedly permissive approach. This
`article reviews the statutory and legislative background and the empirical facts of
`current practice, and offers some strategic pointers for offense and defense at the
`PTAB.
`
`Two primary statutory provisions govern the number of “bites at the apple” that a
`party can take in an inter partes review. A party may not “request or maintain a
`proceeding” with respect to a claim once there is a final written decision as to that
`claim. Moreover, this restriction applies not only to the petitioner, but also to that
`party’s “real party in interest or privy.” In full, this statute provides:
`
`Steven Carlson
`
`The petitioner in an inter partes review of a claim in a patent under this chapter
`that results in a final written decision under 318(a), or the real party in interest
`or privy of the petitioner, may not request or maintain a proceeding before the
`Office with respect to that claim on any ground that the petitioner raised or
`reasonably could have raised during that inter partes review.[1]
`
`Ryan Schultz
`
`One interpretation of this statute is that a party is entitled to a single written decision as to a challenged
`patent claim. That is, once there is a final written decision as to a patent claim, that petitioner may not
`“request or maintain” another proceeding as to that claim. A fair question, then, is whether the PTAB
`should ever issue multiple written decisions against a claim that has been repeatedly challenged by a
`petitioner; and if not, whether a single petitioner should be allowed to take to trial multiple petitions
`against a single claim. Likewise, should the PTAB even allow a petitioner to institute multiple petitions
`against a single claim?
`
`The legislative history of the America Invents Act confirms that Congress was concerned with the
`possibility that companies might launch serial attacks on a patent, burdening patent owners in multiple
`waves of U.S. Patent and Trademark Office litigation. In the debates concerning the proposed Patent
`Reform Act of 2007, the Senate report referenced the “one bite at the apple” rule. These comments
`were directed to the then-proposed “first window” and “second window” post-grant review
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`proceedings. This “second window” is akin to the now-enacted IPR provisions. Congress was concerned
`about serial petitions:
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`In addition, the same party who has once filed a PGR petition, whether in the first or second window,
`regarding any claim in a patent, may not file another PGR on the same patent, regardless of the
`issues raised in the first PGR. This “one bite at the apple” provision was included in Committee to
`quell concerns that a party bent on harassing a patent holder might file serial PGR petitions.[2]
`
`Congress’ concern over the potential burden of serial petitions continued through the 2011 debates,
`with both the Senate and House reiterating the goal of precluding these repetitive challenges. Sen.
`Chuck Grassley, R-Iowa, explained:
`
`In addition, the bill would improve the current inter partes administrative process for challenging the
`validity of a patent… . It would also include a strengthened estoppel standard to prevent petitioners
`from raising in a subsequent challenge the same patent issues that were raised or reasonably could
`have been raised in a prior challenge. The bill would significantly reduce the ability to use post-grant
`procedures for abusive serial challenges to patents.[3]
`
`The resulting statutory restriction of Section 315(e)(1) applies not only to a petitioner, but also to any
`other “real party in interest” and any other “privy” of the petitioner. There is little guidance as to how
`this restriction should be applied. Nonetheless, the Federal Circuit recently commented that Congress
`applied an “expansive formulation” in adopting this language.
`
`The Federal Circuit cast concern that the PTAB had applied an “impermissibly shallow” view in
`determining who counts as a real party in interest or a privy of the petitioner. In Applications in Internet
`Time LLC v. RPX Corp., the PTAB had allowed RPX to institute an IPR proceeding despite the close ties
`between it and Salesforce, which was time-barred from filing its own IPR petition. The Federal Circuit
`found the PTAB has applied an “unduly restrictive view” of Congress’ requirement, and remanded the
`case, directing the PTAB “with an eye toward whether the non-party is a clear beneficiary that has a pre-
`existing, established relationship with the petitioner.” That case, now on remand, will call for the PTAB
`to identify more expansive criteria for determining the scope of the “real party in interest” and/or
`“privy” rule, thus potentially limiting who else may take a “bite at the apple” to challenge a patent claim.
`
`Empirical Study
`
`Robins Kaplan LLP analyzed the petitioning practice of the top five filers of IPRs, specifically Apple Inc.,
`Samsung Electronics Co. Ltd., Google Inc., Microsoft Corp. and LG Electronics Inc. From this data set, it is
`clear that serial, overlapping petitions are commonplace at the PTAB, even by a single entity. Indeed, a
`party can file three, four, five, six or more petitions on a single patent, which these top five filers
`commonly have done. For example, Samsung filed six petitions each challenging at least claim 1 of U.S.
`Patent No. 8,504,746.[4]
`
`Each of the petitions filed by these top five petitioners was reviewed to identify which claims were the
`focus of the petitions, as well as identifying the named real parties in interest. In addition, it was noted
`which petitions resulted in a final written decision. The data cover the time period from inception of IPR
`practice through June 23, 2018.
`
`Apple is the top filer of IPR petitions. Over 56 percent of Apple’s petitions are duplicative, in that they
`challenge at least one claim that is the subject of attack by another Apple petition. Microsoft is even
`higher, at 59 percent. Samsung, Google and LG have 38 percent, 38 percent and 34 percent duplicative
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`petitions, respectively.
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`Duplicative Petition Practice
`56 percent
`
`Apple
`
`Samsung
`
`
`Microsoft
`
`LG Electronics
`
`38 percent
`
`38 percent
`
`59 percent
`
`34 percent
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`From these duplicative petitions, the PTAB will commonly issue multiple rulings on petitions from a
`single entity attacking the same claim. See accompanying data (highlighting in pink the rulings on
`overlapping claims).
`
`Analysis and Strategic Outlook
`
`The PTAB has condoned the filing of multiple, overlapping petitions that attack a common patent claim,
`often followed by issuing written rulings on these overlapping petitions. The PTAB currently allows this
`practice, notwithstanding the rule that a petitioner against a claim that results in a final written decision
`“may not request or maintain a proceeding before the Office with respect to that claim.”
`
`The legal basis for allowing such multiple petitions to proceed is apparently that until there is an actual
`written decision issued by the PTAB, a petitioner is ostensibly free to request and maintain multiple
`petitions. Therefore, petitioners commonly file multiple, overlapping petitions, and, if instituted, those
`petitions are often consolidated and calendared for a single hearing, and then the PTAB will proceed to
`issue multiple rulings on multiple petitions at the same time.
`
`The Federal Circuit has yet to rule whether the PTAB can properly adjudicate multiple petitions from a
`single petitioner challenging a single patent claim. Litigants should not count on this practice being
`approved. For now, petitioners appear to have considerable latitude in filing multiple petitions
`challenging a particular claim. For petitioners, this approach can be tremendously beneficial, by
`providing a mechanism to bring multiple waves of prior art against a patent claim, and to try various
`combinations of art to find one that ultimately prevails. Filing such multiple petitions can also be a way
`to impose leverage on a patent owner. However, given the ruling in Applications in Internet Time that
`restricted multiple petitions (there by a separate entity), cautious challengers might prepare for
`tightening of the gate by the PTAB.
`
`The PTO director has broad authority to restrict multiple challenges against a patent. Where multiple
`petitions are filed against a patent, “the Director may determine the manner in which the inter partes
`review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation,
`or termination of any such matter or proceeding.”[5] Thus, when multiple petitions have been filed
`against a patent, the PTO has the power to stay or terminate the duplicative petitions. Therefore,
`challengers are advised that they may be vulnerable to having duplicative petitions stayed or
`terminated. Therefore it may be prudent to concentrate the best arguments into a single petition, that
`is, to only count on a single bite at the apple.
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`Steven C. Carlson is a partner and Ryan M. Schultz is a principal at Robins Kaplan LLP.
`
`The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its
`clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general
`information purposes and is not intended to be and should not be taken as legal advice.
`
`[1] 35 U.S.C. § 315(e)(1).
`
`[2] Senate Report 110-259, The Patent Reform Act of 2007, 110th Congress, to accompany S. 1145, at
`22.
`
`[3] Senate Debate 2-28-2011 (157 Cong. Rec. S936-S953) (comments of Senator Grassley).
`
`[4] See IPR2016-01224; IPR2016-01200; IPR2016-01211; IPR2016-01206; IPR2016-01223; IPR2016-
`01213.
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`[5] Section 315(d).
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