Piling It On: Five Inter Partes Reviews Target Three Claims

Authored by Michelle Carniaux and Michael E. Sander

What happens when trials are instituted based on five inter partes review petitions filed by four petitioners, targeting just three claims in a single patent? This situation arose in connection with a patent owned by B.E. Tech., and recently resulted in five Final Written Decisions canceling the challenged claims. See IPR2014-00029 (Sony Mobile); IPR2014-00031 (Google); IPR2014-00033 (Google); IPR2014-00040 (Microsoft); IPR2014-00044 (Samsung).

The Board was faced with an administrative challenge: the parties did not move to join their respective cases, but the Board clearly had a desire to maintain a consistent schedule across the pending proceedings to streamline the cases and avoid inconsistent decisions. To further this end, rather than join the cases, the Board synchronized the procedural schedules, with the oral hearing for each of the five cases being scheduled for the same day. At the request of the parties, the Board agreed to conduct a single consolidated oral hearing. See IPR2014-0029, No. 27 Order – Trial Hearing (Nov. 10, 2014). The five Final Written Decisions reference different evidence (the petitioners each used a different expert and expert declaration), but have many parallels in reasoning.

This set of IPRs represents an example of the Board efficiently handling a set of cases in order to increase the efficiencies for all parties involved.

Disclosure: John Flock, Paul Qualey, and Michael Sander of Kenyon & Kenyon LLP represented Sony Mobile in the aforementioned matter.