The PTAB’s reluctance to extend the page limit for Covered Business Method Review Petitions (80 pages) has practitioners scrambling for strategies to present all their arguments within the prescribed limits. One strategy parties have employed is to file multiple petitions. To date, there are seven instances where a party has filed a pair of petitions for a Covered Business Method Review on the same patent.
Apple, Inc. filed two sets of petitions (CBM 2013-19/-20; and CBM 2013-21/-23). Filing each set of petitions on the same day, Apple divided its petitions based on the grounds—one petition for 35 U.S.C. §§ 101 and 112 issues, and the other for 35 U.S.C. §§ 102 and 103 (for each of the two patents). The Board has not yet issued a decision on those petitions.
The Board has considered five sets of petitions filed by Liberty Mutual Insurance Company, instituting two complete sets and one petition from the other three sets. Liberty Mutual divided its issues based on prior art references, presenting a distinct set of references in each of its petitions. In its decisions, the PTAB acknowledged the sister-petitions but did not deny such split petitions on procedural grounds. In the three Liberty Mutual sets where the PTAB denied one petition, but instituted the other (CBM 2012-10/-11; CBM 2013-1/-2; and CBM 2013-3/-4), the Board carefully considered the merits of each of the petitions and denied petitions only on substantive grounds.
In the two Liberty mutual sets where the Board instituted both petitions, the Board sanctioned multiple petitions. In one set (CBM 2012-3 and -9), the Board instituted both proceedings even though the petitions were filed two months apart, showing not only that the PTAB will consider multiple petitions on the merits, but will do so regardless of when they are received. In the other set (CBM 2012-2 and -4), the Board recognized that reviews of the same patent may benefit from consideration of multiple petitions on a parallel track. The Board did not formally join the cases, but set a joint hearing and asked that the parties coordinate discovery.
Given the PTAB’s apparent willingness to substantively consider multiple petitions challenging the same patent, petitioners addressing many claims or relying on several prior art references or invalidity theories should consider splitting their petitions in a logical fashion to avoid forgoing strong arguments before the PTAB.