Authored by Michelle Carniaux and Michael E. Sander
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.
According to their website zpulser.com, Zond is an operating company outside of Boston that makes “[p]ulsed DC plasma generators for magnetron discharge,” a technology used in the semiconductor industry. Petitioners in the proceedings include larger semiconductor foundries such as Intel, TSMC, Fujitsu, and others. Curiously, the technology is also apparently used to make razor blades, and Zond has sued Gillette for patent infringement. Gillette is responsible for 33 of the 125 IPR petitions filed against Zond’s patents; Intel is responsible for 27.
By our count 69, or about half, of the petitions against Zond have resulted in institution decisions. All trials originally requested by Intel have terminated as part of a settlement. The remaining petitions are still pending but are due to be decided in late 2014 or early 2015. Of those that have been instituted, the Board is now beginning the monumental administrative task of determining how the dozens of inter partes reviews should proceed.
Despite the initially staggering numbers, there is much overlap between all of the petitions, and efficiencies can be made. Many of the petitions for inter partes review were filed with a motion for joinder to another petition. The joinder provisions allow a petitioner to “piggy-back” on another’s inter partes review and join in the proceeding. Further, because many of the arguments challenging the validity of a patent share similarities from one proceeding to the next, the Board can consolidate the case schedule and hearing to afford the parties litigation efficiencies.
Last week, during a scheduling conference, the Board began to take steps to take advantage of the similarities between cases. For example, the Board synchronized the trial schedules of all 14 inter partes reviews challenging U.S. Pat. 7,147,7591 and set the oral hearing of all of the proceedings for the same day (see also table below). The Board synchronized the schedule despite the fact that not all of the cases were joined; there are five separate proceedings with at least one IPR joined with each originating proceeding. However, the Board only went so far, and was explicit in its prohibition regarding incorporating arguments from one proceeding into another. The Board allowed the parties to cite each other briefs, but stated that “[e]ach briefing paper must stand on its own, with appropriate supporting evidence.” Id. at 4.
One of the main goals of the America Invents Act and the creation of the Patent Trial and Appeal Board was to streamline and reduce the cost of patent litigation. Zond’s 125 inter partes reviews may be a good test case to see if the PTAB has risen to the challenge.
1Intel also filed five inter partes reviews against the ’759 Patent, see IPR2014-0043,0044,0045,0046,0047, but those proceedings were settled