Getting a Second Bite at the Apple: Filing Multiple IPRs for the Same Patent


By: Margaret Welsh

More than 800 inter partes reviews ("IPRs") have been filed under the new U.S. Patent Office trial proceedings; however, a smaller number of patents have been subject to IPR proceedings.  A growing trend in inter partes review proceedings is for the same Petitioner to file more than one IPR for a single patent.  That is, many patents have been subject to multiple IPR proceedings—some patents have even been subject to four IPR petitions by the same Petitioner. 

Companies such as Oracle, Microsoft, and Apple have filed multiple IPR petitions for the same patent.  For example, in May 2013, Microsoft Corp. filed four IPRs on U.S. Patent No. 6,724,403 related to a graphical user interface and in October 2013, Apple filed four IPRs for 7,010,536 related to a computer system in a multi-user network.  This IPR strategy can give Petitioner a second bite at the Apple.

For example, in its first IPR final decision the PTAB invalidated three claims of U.S. Patent No. 6,778,074 challenged by Garmin , but declined to consider 17 other patent claims raised in the petition. (IPR 2012-00001, Paper 15, p. 25-27).  On June 20, 2013, 5 months after the Board’s initial decision, Garmin filed a second petition requesting inter partes review of claims 1-20 of the ʼ074 patent. (IPR 2013-00373, Paper 1). The second IPR challenged claims which the PTAB declined to review in the first petition. 

Despite its previous denial of review, on December 18, 2013, the PTAB instituted inter partes review for 15 additional claims of the ‘074 patent, in part, because Garmin relied on two additional references which were not considered in the first IPR with respect to claims 1-20.  (IPR 2013-00373, Paper 12, p. 28). Interestingly, the two references were cited in the first IPR proceeding, but only with respect to claims 21-23 in Garmin’s opposition to Patent Owner’s Motion to Amend Claims. 

The PTAB disagreed with the Patent Owner’s preliminary response arguments that the second IPR was entirely duplicative of the first IPR already instituted, and refused to stay the second proceeding. (IPR 2013-00373, Paper 12, p. 27-28).  The PTAB held that the second IPR was not duplicative since the Petitioner relied on two additional references that were previously not raised with respect to claims 1-20.  Thus by filing a second IPR, Garmin was able to raise additional grounds of unpatentability after the PTAB initially denied review, with the significant benefit of the Board’s reasoning in initiating the first IPR proceeding.  On January 23, 2014, the parties entered into a settlement agreement with respect to the second IPR.  While the details of the settlement are not public, the settlement was most likely favorable for Garmin given the outcome of the first IPR and the Board's decision to institute a second IPR.

In this respect, Petitioners involved in litigation will benefit from filing an IPR petition well before the one-year bar date.  Garmin was able to file a second IPR based on additional references not considered in the first IPR proceeding because Garmin filed its first IPR only three months after being served with a complaint. 

In contrast, in IPR 2013-00016 the PTAB denied Research In Motion’s request to submit additional grounds of unpatentability, following summary judgment of invalidity of the challenged claims in a concurrent litigation after the IPR petition was filed. (Paper 18, p. 1).  The PTAB denied RIM’s request, in part, because the PTAB held that the original petition should have included all the asserted grounds of unpatentability and the additional grounds were duplicative of grounds already raised. (Paper 19, p. 3).

Given the above, filing a second IPR may be a beneficial strategy for a Petitioner to challenge additional claims on grounds that are denied in a first  PTAB decision, particularly since the Board’s reasoning may provide significant guidance for arguments that are more likely to succeed.  This strategy may become more popular as the PTAB streamlines IPR proceedings and limits a Petitioner’s ability to submit additional grounds of unpatentability after an IPR is instituted.  By allowing Petitioners to raise additional grounds of unpatentability after a first IPR is denied, an increasing number of patents may be subject to multiple IPR proceedings.