The Patent Trial and Appeal Board (“PTAB”) invoked its discretion under 35 U.S.C. § 325(d) to deny Toyota’s IPR petition against Adaptive Headlamp’s U.S. Patent No. 7,241,034 (“the ’034 patent”) in Toyota Motor Co. v. Adaptive Headlamp Technologies, Inc., IPR2016-01740, Paper 7 (P.T.A.B. March 10, 2017). This was Toyota’s first IPR petition challenging the ’034 patent, however, five other IPR petitions had been previously filed by third parties against the ’034 patent. Three of the five other IPR petitions had been instituted and advanced through oral argument.
In denying Toyota’s petition, the PTAB analyzed the overlap between the two grounds of unpatentability raised in Toyota’s petition and the grounds raised in the previously instituted IPRs. Toyota’s first ground of unpatentability was based on the same combination of references the PTAB instituted in the three pending IPRs. Thus, the PTAB found that Toyota’s first ground of unpatentability was subsumed by the three instituted IPRs. Toyota’s second ground of unpatentability was based on a new primary reference that was not asserted in the other IPRs. However, the PTAB found Toyota’s new primary reference was asserted in a similar manner as a primary reference from two of the instituted IPRs. Therefore, the PTAB found that Toyota’s petition presented substantially the same arguments that were instituted in the other IPRs.
In addition, the PTAB weighed Adaptive Headlamp’s interest in avoiding harassment and delay, along with the PTAB’s interest in deciding issues efficiently, against potential prejudice to Toyota resulting from denial of the petition. In deciding that the balance weighed in favor of Adaptive Headlamp and the PTAB, the PTAB found that Toyota bore responsibility for any prejudice it might suffer because Toyota was aware of the three other instituted IPRs. Further, Toyota did not provide an explanation for the delay in filing its petition of approximately 10-11 months after the other IPR petitions were filed by third parties.