Summary: The General Plastic factors used to determine whether the PTAB will exercise its discretion to deny a follow-on IPR petition can weigh against institution even if the follow-on petition is filed by a different party.

The PTAB recently designated another decision as precedential: Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, -00063, -00084, Paper 11 (PTAB Apr. 2, 2019). Valve Corp. filed a petition for IPR challenging the ’934 patent and patent owner, Electronic Scripting Products (ESR), argued the PTAB should exercise its discretion under 35 U.S.C. § 314(a) to deny the follow-on petition. Before Valve filed its petition, ESR sued both Valve and HTC in the district court for infringement of the ’934 patent. Valve was voluntarily dismissed from the case, while HTC remained and filed an IPR petition challenging the ’934 patent. The PTAB denied institution of the HTC petition. After this denial, Valve filed the petition at issue in this decision.

The PTAB analyzes subsequently filed IPR petitions against the same patent using the General Plastic factors. Factor 1 is “whether the same petitioner previously filed a petition directed to the same claims of the same patent.” Valve argued that it was a different party, not related to HTC, and that Factor 1 should thus weigh in favor of institution. However, the PTAB explained that Factor 1 was not limited to reviewing the actions of a single petitioner. Instead, the PTAB can consider any relationship between the current petitioner and previous petitioners. Here, Valve was a co-defendant with HTC and licensed the technology to HTC for the accused products in the district court litigation. Accordingly the PTAB found that there was a “significant relationship” between Valve and HTC such that Factor 1 weighed against institution. The PTAB denied institution as each of the six remaining General Plastic factors also weighed in against institution.