Last week, the Patent Trial and Appeal Board (the “Board”) denied a second challenge to a patent where the petitioners were co-respondents in an ITC investigation.  In Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot, IPR2018-00761 (“the ’761 IPR”), the Board applied the General Plastic factors and exercised its discretion pursuant to 35 U.S.C. § 314(a) and denied institution against iRobot’s U.S. Patent No. 7,155,308 (“the ’308 Patent”).  The ’308 Patent was also the subject of an unsuccessful challenge in IPR2017-02078 (“the ’2078 IPR”), which was filed months earlier.  The Board found that although petitioners in the ’761 IPR and the ’2078 IPR were not the same or related entities, denial was appropriate because the entities were co-respondents in a related patent infringement Investigation brought by iRobot at the International Trade Commission (“ITC”), Inv. No. 337-TA-1057.  In a concurrence, one patent judge advanced the notion that in addition to current considerations, the Board should add a factor that asks whether petitioners are co-defendants in a patent litigation where the challenged patent is asserted.

When determining whether to exercise its discretion to deny a petition filed against a previously challenged patent, the Board applies the non-exhaustive General Plastic factors.  In General Plastic, a precedential decision, “the Board articulated a non-exhaustive list of [seven] factors to be considered in evaluating whether to exercise its discretion, under U.S.C. § 314(a), to deny a petition that challenges a patent that was previously challenged before the Board.”

In the ’761 IPR, the Board found that because the second petitioner not only had access to iRobot’s Preliminary Response from the ’2078 IPR Petition, it used iRobot’s arguments therein to form its invalidity arguments (third factor) and waited months after identifying the prior art before filing (fourth factor), the third and fourth factors weighed strongly against institution. In addition, the Board found that the Petitioner was aware of four of the five prior art references asserted in the Petition, as they were also asserted in the ’2078 IPR Petition and in the related ITC Investigation, and thus was aware of those references for five and half months prior to filing the Petition.  Petitioner was further criticized for not adequately explaining the time gap (fifth factor). Thus, the Board found that factors three, four, and five all weighed strongly against institution. The Board noted that factor two, which is somewhat related to factor five, also weight against institution because the Petitioner knew about the art when the first petition was filed.

The Board found that factor one weighed in favor of institution because Shenzen Silver, the petitioner in the ’761 IPR, had not previously filed a petition directed at the same claims of the ’308 Patent.  It reasoned that although Shenzhen Silver and Shenzhen Zhiyi are co-respondents in the related ITC investigation and were served with patent infringement complaints in the district court at about the same time, the entities are not related. The Board also determined factors six and seven, which address the finite resources of the Board and consider the requirement to issue a final determination not later than one year after institution of IPR, to be neutral.  It rejected iRobot’s arguments that the twelve grounds asserted in the Petition would strain the Board’s resources, and that the Petition would be more difficult for the Board to review in a year than any other petition.

After weighing these factors, the Board determined that denial of institution was appropriate. Of particular note, during its discussion of the third factor, the Board noted that “the timing of Petitioner’s filing in this case raises the potential for abuse, because Petitioner had ample opportunity (almost three months) to study the arguments raised by Patent Owner regarding the commonly challenged claims of the ’308 Patent.”  This is consistent with how the Board has approached other instances where a follow-on petition was filed after receiving a patent owner response in a previously-filed IPR by the same party.

The concurrence suggested that the Board should consider an eighth factor in situations such as here, where the petitioners in the serial IPR petitions are co-defendants in litigation. Analysis of this factor could also include a rebuttable presumption that an after-filed petition should be denied under General Plasticwhere the after-filed petition was filed after an earlier filed petition has received a preliminary response or institution decision.  This, the concurrence reasoned, “would provide useful guidance and emphasis on how strongly timing issues may dictate the outcome when there are similarly situated defendants.”

As the law continues to develop regarding the Board’s application of its discretion to institute IPR in similar factual circumstances, parties considering filing IPR petitions should consider the timing and possible collaboration of IPR petitions where similarly situated defendants are involved, and patent owners should carefully review who has filed petitions and when to determine if the General Plastic factors apply.