Discretionary Denial as a Case Management Tool: PTAB Requires Petitioner to Rank its Six IPR Petitions by Merit and then Institutes on only Highest Ranked Petition

Following the Supreme Court’s decision in SAS v. Iancu, which held that an IPR institution is an “all-or-nothing” proposition, the PTAB lost its ability to rely on “partial institutions” as a case management tool (e.g., by denying institution of so-called redundant grounds). In recent months, however, we have observed a variety of ways in which the PTAB has applied its discretionary authority under § 314(a) to deny institution of IPRs, including for case management purposes. A broad application of the PTAB’s authority for case management is illustrated in Comcast Cable Communications, LLC v. Rovi Guides, Inc., IPR2019-00225, IPR2019-00226, IPR2019-00227, IPR2019-00228, IPR2019-00229.

In November 2018, Comcast filed six separate IPR petitions against Rovi’s U.S. Patent No. 7,827,585 (the “’585 patent”). The ’585 patent is directed to interactive television program guide systems, and is at issue in a district court case and an ITC proceeding. On April 3, 2019, the PTAB required that Comcast provide a Notice ranking the six petitions in the order in which it wishes the panel to consider the merits. The Case Management Order also required Comcast to provide a succinct explanation of the differences between the petitions, why the differences are material, and why the PTAB should exercise its discretion to consider instituting on more than one petition. The PTAB also gave Rovi an opportunity to respond to Comcast’s Notice Ranking Petitions.

On June 3, 2019, the PTAB issued a decision to institute all of the challenged claims of the ‘585 patent based on Comcast’s no. 1 ranked petition. IPR 2019-00224, Paper No. 14. The standard for institution set forth in 35 U.S.C. § 314(a) requires a petition to show a reasonable likelihood that the petition would prevail with respect to at least one of the challenged claims. The PTAB determined that Comcast had shown a reasonable likelihood of prevailing on all of the challenged claims, based on all grounds presented in the petition.

In a separate decision, the PTAB denied institution of Comcast’s petitions ranked 2-6. IPR 2019-00225, -226, -227, -228, & -229, Paper No. 14. The PTAB noted that it always has discretion to deny institution of an IPR, citing to Supreme Court and Federal Circuit precedent. In deciding to exercise discretion, the PTAB considered PTO Guidance, which allows for consideration of effects on “the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings.” Office Patent Trial Practice Guide, August 2018 Update, 83 Fed. Reg. 39, 989 at 10-11 (August 13, 2018). Additionally, the PTAB noted that it is to construe its rules to “secure the just, speedy, and inexpensive resolution of every proceeding” under 37 C.F.R. § 42.1(b). Comcast argued that the additional IPRs were necessary due to concerns relating to potential arguments that Rovi may raise, including swearing behind prior art. However, Rovi conceded that it would not swear behind prior art in the instituted petition. The PTAB found the remaining areas of dispute were not sufficiently material to warrant the inefficiencies and additional costs associated with instituting additional IPRs. The PTAB also pointed out that it instituted all challenged claims of the ‘585 patent with respect to all grounds in Comcast’s no. 1 ranked petition, including seven obviousness challenges for each independent claim.

Based on the discretion exercised here, IPR litigants in the future should keep in mind that filing multiple petitions for the same patent could lead the PTAB to request that the petitioner select the most meritorious petition for consideration. However, it is worth noting that the benefits of additional IPRs may, in certain situations, outweigh the PTAB’s concerns of inefficiencies and expenses, particularly where those IPRs raise additional material issues. Another interesting aspect, not addressed in these cases, is how petitioner estoppel under § 315(e) would affect the prior art in the denied IPRs if the claims are not ultimately cancelled via the instituted IPR. Should the petitioner be estopped from raising prior art from the non-instituted IPRs back at the district court or ITC?

Editor: Nathanael Luman, Ph.D.