PTAB Cements Institutional Discretion

Back in January, I identified the Board’s expanding view of 314(a) discretion as the most significant development of 2018. In that earlier post, I predicted that one such 314(a)/325(d) case, NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., would be designated precedential in 2019.

Yesterday, the PTAB delivered on my prediction.

As a reminder, in NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc.,(here) IPR2018-00752 (PTAB Sept. 12, 2018) (Paper 8), institution was denied under 35 U.S.C. § 325(d) after applying the Becton Dickinson factors and under 35 U.S.C. § 314(a) after determining that instituting review would be an inefficient use of Board resources where the district court proceeding was nearing final stages and the Board proceeding would involve the same claim construction standard, the same prior art references, and the same arguments as in the district court.

A more recent decision in Valve Corp. v. Elec. Scripting Prods., Inc.,(here) IPR2019-00062, -00063, -00084 (PTAB Apr. 2, 2019) (Paper 11) was also designated precedential. This decision denies institution after applying the General Plastic factors, explaining that the Board’s application of the General Plastic factors is not limited to instances when multiple petitions are filed by the same petitioner. This decision also explains that when different petitioners challenge the same patent, the Board considers any relationship between those petitioners when weighing the General Plastic factors.

These precedential designations will ensure that 314(a) arguments are part of most Patent Owner Preliminary Responses (POPR). Where panels earlier this year were able to side-step these holdings as being limited to follow-on petitions, or non-binding, those days are now over.