PTAB Denies Institution Of Petitioner's Second IPR Based On Newly Cited Prior Art Because Petitioner Knew Of The Prior Art Before Filing First IPR

Author:Mr Thomas Landers IV
Profession:Akin Gump Strauss Hauer & Feld LLP

On March 20, 2017, a Patent Trial and Appeal Board (PTAB) panel declined to institute an inter partes review (IPR) of patent claims that were also the subject of a previously filed IPR by the same petitioner (IBM). IBM contended that the first filing should not negate institution of the second filing because the second petition presented "different prior art combinations [and] different arguments regarding the prior art." In rejecting this contention, the panel addressed several factors that guide the PTAB in such cases, particularly focusing on (1) "whether, at the time of filing of the earlier petition, the petitioner knew of the prior art asserted in the later petition or should have known of it," and (2) "the length of time that elapsed between the time the petitioner learned of the prior art asserted in the later petition and the filing of the later petition."

IBM filed the first petition on May 10, 2016, and the second on September 19, 2016. The patent owner showed that IBM had knowledge of the later-asserted references as early as April 4, 2016—the date when IBM served the patent owner with invalidity contentions based on those references in a related lawsuit. Thus, the panel concluded that IBM knew of the later-asserted prior art at the time of the first filing. It also found that the five-month delay between learning of the prior art and filing the second...

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