The Patent Trial and Appeal Board (PTAB) is granting inter partes review (IPR) petitions at a 70% clip. Imagine the surprise, then, when on a single day, September 16, 2015, petitioners went an incredible 0 for 5—the PTAB denied five petitions for IPR and granted none! It seemed like a statistical improbability. Maybe a signal that the tides have turned for patent challengers?
… on a single day, September 16, 2015, petitioners went an incredible 0 for 5…
At first glance, there is nothing abnormal about the five petitions denied on September 16 (IPR2015-00813, IPR2015-00836, IPR2015-00859, IPR2015-00873, IPR2015-00876). Each petition argues obviousness and cites to expert testimony; sometimes claims were construed and sometimes not. It can’t even be said that this 0-5 anomaly is the result of a particularly stalwart judge; the petitions were evaluated by a total of thirteen different APJs. What is common amongst them, though, is the petitioners might be giving the PTAB reasons to deny the petitions beyond flawed prior art references:
- IPR2015-00813: The PTAB decided that the petitioner’s obviousness combination failed to disclose a network address element. But the real story may be that this was the petitioner’s second IPR petition challenging the same patent. The first petition, IPR2015-00812, was instituted five days before this denial. We’ve heard before that the PTAB does not favor serial petitions, and though the PTAB does not mention this as a basis for this denial, we are left wondering if it made a difference.
- IPR2015-00876: Here the PTAB said the combination of prior art relied on improper hindsight, chastising the petitioner for “rewriting” the prior art’s disclosure. But this is the petitioner’s third petition challenging the same patent. The first petition was denied, and the second petition was instituted on all claims. That makes this third try another serial petition. Perhaps the PTAB has had enough.
- IPR2015-00859: The PTAB denied this petition ostensibly due to missing limitations in the prior art, and an insufficient showing of a motivation to combine references. The PTAB must have noticed, though, that the petitioner requested review on sevendifferent obviousness grounds for the same three claims of the challenged patent! The PTAB has warned us about the kitchen sink approach before.
- IPR2015-00873: Here the PTAB caught the petitioner trying to pull a fast one. The petition relied on prior art that appeared in multiple places in an earlier petition filed by the same party. We have previously discussed, in detail, this regurgitated petition and the PTAB’s various views on estoppel.
- IPR2015-00836: The PTAB said that the petitioner failed to show that the prior art references teach detecting the installation of a new application based, at least in part, on a list of the currently-installed applications. Though the references taught both detection of new applications, and a list of current applications, the petitioner made only a “conclusory statement” about linking the two teachings together: “[t]hus, [the prior art] system detects based at least in part on the list, an installation of at least one new application on the mobile device.” IPR2015-00836, Paper 7, pg. 8.