Canon Inc. v. Intellectual Ventures I LLC

In a combined decision of three inter partes review (IPR) proceedings issued by the Patent Trial and Appeal Board (PTAB or Board), the Board declined institution inter partes review of 31 claims of a challenged patent in two out of three separate but related IPR petitions, noting that the petitioner cited no fewer than 49 grounds for unpatentability across the three petitions. The PTAB did institute IPR proceedings for the third petition. Canon Inc. v. Intellectual Ventures I LLC, Case Nos. IPR2014-00535, IPR2014-00536, IPR2014-00537 (PTAB, Sept. 24, 2014) (Boucher, APJ).

The patent at issue describes scanning circuit structures for scanners that have the capability to reduce distortion during high-speed image signal transmission.

The PTAB began its decision by examining the first of the three related petitions. The Board determined that the petitioner had sufficiently demonstrated a reasonable likelihood of prevailing on the majority of challenged claims and granted institution of inter partes review. However, the Board declined to institute IPR proceedings on several additional grounds asserted by the petitioner, noting that it was “not convinced that these various combinations add substantively to the grounds on which we institute.”

The petitioner filed two additional, related petitions challenging the patentability of all claims of the patent at issue. As the PTAB noted in its decision, the petitioner asserted multiple challenges to each claim of the patent across all three filed petitions, yet failed to “address the duplicative nature of its arguments across petitions.” Further, the petitioner relied on the same expert declaration to provide support for all three of its petitions and made no effort to distinguish between the petitions. As such, the expert declaration was “generic, i.e., it is not specific to any one of the proceedings, but instead presents five alternative combinations of prior art.” The generic approach taken by the petitioner’s expert convinced the PTAB that all three petitions should be considered together as a single petition. The PTAB accordingly denied institution of inter partes review for two of the petitions.

Practice Note:  When filing multiple petitions requesting inter partes review, be sure that each ground for unpatentability is sufficiently supported on its own. Using a generic approach across multiple grounds will likely succeed only in annoying the PTAB. When in doubt, do some arithmetic and recall the Boards’ admonition at asserting 49 grounds is way too much.