Exercising its discretion, the Patent Trial and Appeal Board (PTAB) denied institution of a petition for inter partes review (IPR) because the petitioner previously had filed an IPR petition challenging some of the same claims, had been aware of the prior art references in the second petition for several months, and had waited too long to file the second petition. Int’l Bus. Mach. Corp. v. ZitoVault, LLC, Case No. IPR2016-01851, (PTAB, Mar. 20, 2017) (Fishman, APJ).

ZitoVault sued Amazon alleging infringement of a patent directed to cryptographic protocols. Amazon filed an IPR petition challenging certain claims of the patent. ZitoVault then sued IBM for alleged infringement of the same patent. IBM served invalidity contentions, identifying several prior art references that had not been asserted in the Amazon IPR. In the meantime, the PTAB instituted the Amazon IPR on every challenged claim except claim 4.

IBM filed an IPR petition that was substantially identical to Amazon’s petition, along with a motion seeking joinder with the Amazon IPR. IBM’s petition did not challenge claim 4. The PTAB joined the Amazon and IBM proceedings, and ZitoVault filed a response. About a month later, IBM filed a second IPR petition challenging the same claims, plus claim 4, based on prior art references that were not asserted in the Amazon/IBM proceeding but were identified in IBM’s district court invalidity contentions. ZitoVault then filed its preliminary response, asking the PTAB to exercise its discretion and deny IBM’s second petition.

The PTAB agreed with ZitoVault and denied institution. The PTAB reasoned that IBM had filed an earlier petition challenging the same claims except for claim 4. As to claim 4, the PTAB provided the following explanation: “[a]lthough claim 4 was excluded from Petitioner’s earlier filing (IBM IPR), Petitioner had already challenged all other claims challenged in this Petition.” The PTAB also noted that IBM was aware of the new references, citing to the invalidity contentions IBM served in district court prior to filing its second IPR petition. According to the PTAB, “Petitioner could have filed this Petition at the same time as the earlier petition, applying the new references, instead of, or in addition to, those used in the earlier petition.”

In addition, the PTAB noted that IBM filed its petition after ZitoVault filed its response in the Amazon/IBM IPR. “Petitioner waited more than five months after knowing of the new references; waited more than five months after our Decision on Institution in the Amazon IPR; waited more than four months after filing its petition in the IBM IPR to join in the Amazon IPR; and waited more than a month after Patent Owner’s Response was filed in the Amazon IPR.” For these reasons, the PTAB denied institution of IBM’s second IPR petition.