Exercising its discretion under 35 USC § 314(a), the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review (IPR) because the petitioner had (1) previously submitted a petition for IPR on similar grounds, (2) could not explain the delay in filing its second petition and (3) knew of the asserted prior art at the time of filing its first petition. Alcatel-Lucent USA Inc. v. Oyster Optics, LLC, Case No. IPR2018-00257 (PTAB, June 4, 2018) (Kenny, APJ).

Oyster owns a patent directed to transceiver cards used by a telecommunications box for transmitting and receiving data over multiple optical fibers. Oyster filed suit against a number of companies, including Alcatel, in the Eastern District of Texas and the Northern District of California alleging infringement of the patent.

In July 2017, Alcatel served its invalidity contentions in its district court litigation. In October 2017, Alcatel filed its first IPR petition requesting review of all relevant claims of the asserted patent, and in December 2017, Alcatel filed its second IPR petition, which identified nine asserted references. Six of these references were cited in Alcatel’s invalidity contentions, and another was cited in a co-defendants’ contentions.

Under § 314(a), the PTAB can invoke its discretion to deny institution based on a follow-on petition on the same patent. The PTAB considers the following factors:

• Whether the petitioner previously filed a petition directed to the same claims

• Whether the petitioner knew or should have known of the asserted prior art at the time of the first petition

• Whether the petitioner received the patent owner’s response to the first petition before filing the second petition

• The amount of time between the petitioner’s discovery of the asserted prior art and the filing of the second petition

• The petitioner’s explanation for the time between the first and second petitions

• The PTAB’s resources

• The requirement to issue a final determination within one year of institution

Here, the PTAB determined that a majority of the factors weighed against institution. It found that Alcatel had previously filed a petition directed to the same claims and knew of at least seven of the nine asserted references at the time the first petition was filed. The PTAB was unconvinced by Alcatel’s arguments with respect to an additional “new” reference, Moulton, which was not cited in the district court litigation. Instead of identifying when it first discovered the Moulton reference, Alcatel argued that it “became aware of Moulton’s [specific] teaching” after filing the first petition. The PTAB found that since Alcatel failed to identify when it became aware of Moulton itself, rather than the specific teaching relied upon, Alcatel failed to provide an adequate explanation for its delay.