The Board recently designated as precedential two decisions relating to their discretion to deny review.
In Valve Corp. v Electronic Scripting Prods., Inc., the Board determined that there was a significant relationship between Valve and a prior petitioner that should be considered in determining whether to institute the IPR.
The patent owner had sued HTC and Valve based on the incorporation of Valve’s technology into an HTC device. Valve, however, was voluntarily dismissed from the litigation after challenging venue. After a petition for IPR filed by HTC was denied, Valve filed a petition challenging the same claims. In deciding whether or not to institute, the Board determined that “the application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same petitioner.” The Board determined that it will instead consider any relationship between petitioners when weighing the General Plastic factors.
In performing its analysis, the Board found that all of the General Plastic factors weighed against institution. In determining whether the same petitioner previously filed a petition directed to the same claims (Factor 1), the Board found that there was a significant relationship between Valve and HTC and the complete overlap in the challenged claims favored denying institution. The Board also determined that Valve should have been aware of the prior art cited by HTC (Factor 2), that Valve waited until the Board ruled on HTC’s petition before filing (Factor 3), that Valve could have filed their petition at or around the same time as HTC (Factors 4 & 5), and that “having multiple petitions challenging the same patent, especially when not filed at or around the same time as in this case, is inefficient and tends to waste resources (Factors 6 & 7). For these reasons, the Board exercised discretion under § 314(a) to deny institution.
A link to the decision is found here: Valve Corporation v.Electronic Scripting Products, Inc.
In NHK Spring Co., Ltd., v. Intri-Plex Tech., Inc., the Board denied review based on § 325(d) and § 314(a). The Board determined to exercise its discretion to deny under § 325(d) because NHK’s petition was based on the same arguments that were previously overcome by the patent owner during prosecution. NHK relied on the same prior art that was considered by the Examiner, and the findings the Examiner made were substantially similar to the arguments presented by NHK in the petition.
The Board separately determined that the advanced state of the related district court litigation favored denying the petition under § 314(a). The district court trial was set and scheduled to conclude prior to the trial for the petition. Because NHK raised the same prior art defenses in the district court litigation, the Board found that it would not be an efficient use of resources to implement the IPR.
A link to the decision is found here: NHK Spring Co., Ltd., v. Intri-Plex Tech., Inc.