The PTAB weighed five factors in its discretionary denial of a second IPR petition filed by the same petitioner in Xactware Solutions, Inc. v. Eagle View Tech., Inc., IPR2017-00034, Paper 9 (P.T.A.B. April 13, 2017).

In a previous proceeding brought by Xactware, the PTAB instituted IPR for several claims from Eagle View’s patent—including claims 1 and 10—and denied institution for claim 8. Xactware filed a second petition challenging claims 1, 8 and 10 based on references that were not previously asserted against those claims.

Eagle View argued that the second petition should be denied under 35 U.S.C. § 325(d), which permits denial where “the same or substantially the same prior art or arguments previously were presented to the Office.” However, the PTAB invoked the broader provision of 35 U.S.C. § 314(a), which permits, but does not require or compel, the PTAB to institute an IPR. The PTAB was more concerned with Xactware’s multiple attacks on the same patent, which would allow it to adjust and fine-tune arguments based on the previous proceeding, than whether Xactware previously raised substantially the same arguments. The PTAB weighed five factors in analyzing whether it should deny institution under § 314(a):

(a) whether the same petitioner previously filed a petition directed to the same claims of the same patent,

(b) whether the petitioner knew or should have known of the prior art asserted in the later petition when it filed its earlier petition, and

(c) whether at the time of filing of the later petition, the petitioner already received the patent owner’s preliminary response to the first petition or received the PTAB’s decision on whether to institute review in the earlier petition,

(d) the length of time that elapsed between when the petitioner had the patent owner’s or PTAB’s analysis on the earlier petition and when petitioner filed the later petition, and

(e) whether the petitioner provides adequate explanation why the PTAB should permit another attack on the same claims of the same patent.

The panel found all five factors weighed in favor of denying institution: the second petition was directed to the same claims, Xactware was aware of the prior art when it filed its first petition, Xactware had the preliminary response and institution decision from the first petition long enough to take advantage of those materials, and Xactware did not justify the advantage it gained by waiting to file the second petition. The PTAB therefore denied institution of the second petition.

Other PTAB panels have used the same five factors plus two additional factors in denying institution of secondary petitions: (1) the finite resources of the Board, and (2) the requirement to issue a final determination not later than one year after institution. See, e.g., NVIDIA Corp. v. Samsung Electronics Co., IPR2016-00134, Paper 9 at 6-7 (P.T.A.B. May 4, 2016); LG Electronics Inc. v. Core Wireless Licensing S.A.R.L., IPR2016-00986, Paper 12 at 7 (P.T.A.B. August 22, 2016); Great West Casualty Co. v. Intellectual Ventures II LLC, IPR2016-00453, Paper 12 at 8 (P.T.A.B. June 9, 2016); Int’l Business Machines Corp. v. ZitoVault, LLC, IPR2016-01851, Paper 7 at 5 (P.T.A.B. March 20, 2017); Medtronic Xomed, Inc. v. Neurovision Medical Products, Inc., IPR2016-01405, Paper 12 at 7 (P.T.AB. December 29, 2016). The PTAB has applied these two additional factors to deny institution of follow-on petitions. Going forward, it will be interesting to see if panels include five or seven factors in evaluating discretionary institution of secondary IPR petitions.