New business models are often risky, and those based on patents are no exception. When we last wrote about Iron Dome LLC (“Iron Dome”), we discussed their novel (alleged) business model of offering to forego their right to file petitions for inter partes reviews against specific patents owned by patent assertion entities (“PAE”) in exchange for a transferable license to the patents. We already reported that Iron Dome filed IPRs against patents owned by Chinook Licensing (IPR2015-00055) and e-Watch, Inc. (IPR2014-00439), allegedly after their offers were rebuffed. Iron Dome’s petition for IPR against e-Watch was granted.
The PTAB has recently begun pushing back on (alleged) attempts to circumvent the PTAB’s policy against including “redundant grounds” in IPR trials.
The PTAB’s redundancy policy is not new. Within a month of opening its doors, the PTAB made it clear that it will not allow an IPR petitioner to make multiple similar arguments challenging the validity of the same claims within an IPR petition, i.e., the PTAB will not entertain “redundant” grounds of invalidity raised in an IPR petition:
What does a patent owner do when they are facing 125 petitions for inter partes review in a single year? How does the Board properly handle proceedings with nearly a dozen petitioners, with overlapping arguments and prior art?
When we last wrote about the top patent owners at the PTAB, we noted that Zond, Inc. was the patent owner with the most number of IPR petitions filed against their patents. At the time, they had an astonishing 62 petitions for inter partes review filed against them. However, in the five months since the article, the total number of petitions filed against Zond’s patents has more than doubled, now at an incredible 125 petitions for inter partes review.
Yet another novel business model focused on IPR petitions appears to have emerged in the patent litigation industry. We previously discussed IPR petitions filed by New Bay Capital LLC, which were speculated to have been filed on behalf of a hedge fund to shift the stock price of a publicly traded patent assertion entity.
While developing an inter partes review petition, it is easy to get so focused on the substance of the invalidity challenge and expert declaration that PTAB procedure and practice guidelines are left as an afterthought. However, as has been shown time and time again, the PTAB relies on its procedures to help keep post grant proceedings streamlined. As the dockets of the PTAB Administrative Patent Judges become heavier, one can expect the importance of procedure to become even greater. Two (related) practices that appear to frustrate PTAB Judges are: (1) incorporating into the petition by reference portions of declarations or other exhibits, and (2) insufficiently explaining in the petition how claim elements are met.