In re Petition for Inter Partes Review by Mitsubishi Plastics, Inc.

In a request for a rehearing of an earlier decision denying institution of inter partes review, the Patent Trial and Appeal Board (PTAB or Board) ruled that IPR petitions that challenge the same patent and cite to the same prior art but use different arguments, may result in different institution decisions.  In re Petition for Inter Partes Review by Mitsubishi Plastics, Inc., IPR 2014-00524 (PTAB, Nov. 21, 2014) (Crumbley, APJ).

Petitioner Mitsubishi requested a rehearing of an earlier PTAB decision denying institution of a proceeding on a patent that had been challenged earlier by two other petitioners, both of whom cited to the same prior art and relied on the same expert as Mitsubishi.

The Board concluded that the evidence three different expert declarations presented in the three petitions was not the same.  Rather, “[t]he differences between [the expert’s] declaration in the present case and the one submitted in the [prior and related] proceeding are material, and lead to the different results in our institution decisions.”

In its request for rehearing, Mitsubishi also argued that denying institution of an IPR based on its petition would “undermine the predictability and uniformity of decision making by the PTAB.”  The Board disagreed, stating that the decisions in the various IPR petitions were not in conflict “because of the different records presented in each case . . .” In rejecting the petitioner’s argument, the PTAB explained that the “rule [Mitsubishi] proposes—that every Petition citing the same art must be decided identically, regardless of the arguments set forth in the Petition—ignores the adversarial, adjudicative nature of an inter partes review.”

In a different case touching on a similar issue, the PTAB denied institution on the petition precisely because it presented substantially the same arguments and prior art in a related proceeding.  Canon Inc. v. Intellectual Ventures I LLC, IPR 2014-00952 (PTAB, Nov. 21, 2014) (Boucher, APJ).

Canon had earlier filed a petition to institute an inter partes review of a challenged patent.  Later, Canon filed a second petition to institute another IPR of the same claims of the same patent.  The PTAB instituted an IPR on the earlier petition but “because the same claims [were] challenged on the same grounds in [the later filed petition], [it] decline[d] to institute a second inter partes review of the claims on that ground.”

Practice Note:  The same prior art reference(s) may be used in different or related inter partes review proceedings as long as the theories and arguments advocated in each are materially different.  The PTAB has discretion as to whether to institute where successive IPR petitions relying on the same prior art or similar argument are presented.