Director Encouraged to Do What He is Already Doing?
At several bar events over the past few weeks, the Director has made clear that the agency is “looking into” ways to address certain serial petitioning practices beyond that of the “follow-on” scenario. For example, where multiple petitions are filed at the same time for the sole purpose of multiplying the number of grounds for an AIA trial proceeding.
This past Tuesday, the Senate Judiciary Committee sent a letter to Director Iancu seemingly asking him to do what he is already doing. And for him to respond to proposed directives (transparently presented in the form of questions) on accomplishing such.
The letter (here), acknowledges that the General Plastic decision was recently designated precedential, but this recent development is not believed to go far enough. Along the way the letter criticizes practices already addressed by General Plastic, or existing non-precedential Board practices. The goal of the letter appears to be acceleration of additional precedent in this area…which, frankly, has already been fairly accelerated.
As to the letter’s enumerated directives/questions, I add predicted responses to each:
1. Will you adopt a presumption that, when the PT AB has already issued a decision on institution with respect to a particular patent, further petitions, whether by the original petitioner or different petitioners, will not be entertained in the absence of compelling circumstances?
Answer: There is already a practical presumption of sorts for follow-on and similarly situated defendants (although similarly situated is still non-precedential).
Follow-on petitions by the original petitioner are already effectively outlawed under 314(a) and General Plastic. Likewise, there have been decisions recognizing “similarly situated” defendants. See Shenzhen Silver Star Intelligent Technology Co. Ltd., v iRobot Corp. & Valve Corp. v. Electronic Scripting Products. Inc.
The “similarly situated” factor will be added as a new General Plastic factor by precedential designation (which I predicted would happen months ago). On the other hand, there should not be a presumption (or it would constitute compelling circumstances) where the petitioner was later sued. (see answer to question (2) as well)
2. Will you modify the first General Plastic factor to also ask whether a different petitioner previously filed a petition directed to the same patent?
Answer: Not exactly, the agency needs to distinguish between serially accused defendants and similarly situated defendants – both scenarios yield “different” defendants
As noted above in question (1), the question is not whether the defendant is merely different, but whether it is a similarly situated defendant. If a first party is sued in 2014, and a different party is sued in 2017 on the same patent, why should the 2017 defendant be denied access to the PTAB based upon being different from the 2014 defendant? Certainly, serial defendants are entitled to an invalidity case in the courts; the PTAB should be no different.
3. Will you consider affiliates of a prior petitioner to be the “same petitioner”‘ for all intents and purposes?
Answer: The statute already contemplates privies, and similarly situated defendants are discussed above. Not sure how an “affiliate” is outside of these existing controls. That said, the Valve decision considers “any” relationship. (see question (5))
4. Will you require an executive management member or owner of the petitioner entity to provide by sworn affidavit a list of all parties that any person in the petitioning entity has collaborated or coordinated with, directly or indirectly, regarding IPR petitions filed against the challenged patent?
Answer: Likely, but even if adopted, this change would not move the needle.
The petition is already signed by an attorney making the very same certifications (at risk of disciplinary action, sanctions, etc). Likewise, the CAFC has made clear that questions of RPI are not limited to “control.”
5. Will you designate as precedential your recent decision in Valve Corp. v. Electronic Scripting Products. Inc., IPR2019-00062 (PTAB Apr. 2, 2019), which held that “serial and repetitive attacks.” even by different petitioners, weigh against institution?
Answer: Yes. Likely to designate it as precedential to hold that General Plastic is not limited to a same petitioner, and that “any” relationship is considered under “similarly situated.” (Tellingly, Director Iancu was paneled in this decision).
Left unaddressed in this letter is the situation I noted at the outset of filing multiple petitions to avoid discretionary denials under SAS (where 2 petitions of 3 can still be denied with one going forward). I expect the PTAB will also address this new phenomena in the coming weeks.