The PTAB recently denied Intel's (Petitioner) parallel IPR petition (IPR2023-01140) against AX Wireless (Patent Owner) challenging certain claims of U.S. Pat. No. 10,917,272. The denial came after Intel filed a separate petition (IPR2023-01139) challenging different claims of the '272 patent the day before it filed the -01139 petition, which was granted.
The '272 patent relates to an OFDM communication environment having header repetition. The '272 patent further describes various way of communicating a header repetition scheme in a system so that various nodes are aware of the scheme used. The 1140 petition challenged claims 11-13, 15, and 17-19 under 35 U.S.C. § 103(a).
Intel filed the 1140 petition the day after it filed a first petition directed to the '272 patent, but challenging different claims. The PTAB looked to the Patent Trial and Appeal Board Consolidated Trial Practice Guide (November 2019) for guidance on parallel petition filing, explaining "[o]ne petition should be sufficient to challenge the claims of a patent in most situations" and that "multiple petitions by a petitioner are not necessary in the vast majority of cases." Decision at 6-7.
Intel argued that the parallel petitions were appropriate in this instance because AX Wireless asserted 14 claims in the related district court litigation, and because of "the length of the independent claims." The PTAB disagreed with both arguments. First, the PTAB agreed with the Patent Owner that 14 asserted claims in a related district court action is reasonable because "petitioners routinely challenge more than 14 claims in a single petition" and "the basic filing fee for an inter parties review contemplates challenging up to 20 claims." Decision at 7.
Second, while claims 1 and 11 comprised 59 and 54 lines respectively, the PTAB noted that "independent claims 1 and 11 are largely identical, except where claim 1 is directed to transmitting and modulation and claim 11 is directed to receiving and demodulation." Decision at 8. The PTAB further held that multiple petitions were unnecessary here as the entire patent could be divided into "two identical groups of just seven claims each." Decision at 8. The PTAB also noted that Petitioner did not address why one petition could not point to the different portions of the transceiver, as there were almost 500 words unused in the 1139 petition.
Finally, Petitioner argued that multiple petitions were appropriate because Patent Owner still had the opportunity to add asserted claims to the district court litigation. However, the PTAB found that "Petitioner makes no attempt to tether this argument to a justification for multiple petitions."
Takeaway:
Parallel IPR petitions are often denied. A Petitioner needs to show a good reason— like an inordinate number of claims, unreasonable length of claims, or other exception—for the PTAB to grant a parallel IPR petition. The ability of a Patent Owner to assert more claims in related district court litigation is generally irrelevant as to whether parallel petitions are appropriate.
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