Not a Lexis Advance subscriber? Try it out for free.

2019 Pat. App. LEXIS 4324

Patent Trial and Appeal Board Representative Orders, Decisions and Notices

               April 02, 2019, Decided

Case IPR2019-00062 (Patent 9,235,934 B2), Paper 11; Case IPR2019-00063 (Patent 9,235,934 B2); Case IPR2019-00084 (Patent 9,235,934 B2) 1             

USPTO Bd of Patent Appeals & Interferences; Patent Trial & Appeal Bd Decs.


                  WEINSCHENK, Administrative Patent Judge.


                  Denying Institution of Inter Partes  Review

                                                                  35 U.S.C. § 314                                                         

                  I. INTRODUCTION

                  Valve Corporation ("Valve") filed three petitions (IPR2019-00062, Paper 1, "Pet."; IPR2019-00063, Paper 3; IPR2019-00084, Paper 1) requesting inter partes  review of claims 1-12 of U.S. Patent No. 9,235,934 B2 (Ex. 1002, "the '934 patent"). This Decision addresses common issues presented by all three petitions. For purposes of  [*2]  this Decision, we treat the Petition in IPR2019-00062 as representative and cite to the record in IPR2019-00062, unless otherwise indicated.

                  Electronic Scripting Products, Inc. ("Patent Owner") filed a Preliminary Response (IPR2019-00062, Paper 5, "Prelim. Resp.") to the Petition. Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition as an "unfair" follow-on petition. Prelim. Resp. 7-11. Pursuant to our authorization (Paper 6, 4), Valve filed a Reply (Paper 7, "Reply") to Patent Owner's follow-on petition argument, and Patent Owner filed a Sur-reply (Paper 8, "Sur-reply") to the Reply.

                  Valve is not the first party to request an inter partes  review of the '934 patent. HTC Corporation and HTC America, Inc. (collectively, "HTC") previously filed a petition requesting an inter partes  review of the '934 patent in IPR2018-01031 ("the 1031 IPR"). IPR2018-01031, Paper 2. The Board denied institution of HTC's petition because HTC failed to show a reasonable likelihood of prevailing in establishing the unpatentability of at least one challenged claim.  [*3]  Ex. 1060, 16. Valve filed the Petition in this case after the Board denied institution in the 1031 IPR. Paper 4, 1; Ex. 1060, 1.

                  In General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 15-16 (PTAB Sept. 6, 2017) (Paper 19) (precedential), the Board articulated a non-exhaustive list of factors to be considered in determining whether to exercise discretion under § 314(a) to deny a petition that challenges the same patent as a previous petition. Under the first General Plastic factor, we consider "whether the same petitioner previously filed a petition directed to the same claims of the same patent. " General Plastic, slip op. at 16. However, our application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same petitioner. Rather, when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors. Based on our consideration of the General Plastic factors, we determine that it is appropriate to exercise our discretion under § 314(a) to deny the Petition.

Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.

Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.

2019 Pat. App. LEXIS 4324 *




               PRECEDENTIAL OPINION. Pursuant to the Board of Patent Appeals and Interferences Standard Operating Procedure 2, the opinion below has been designated a precedential opinion.



patent, valve, plastic, inter partes, prior art, prelim, reply, district court, technology, weigh, slip opinion, multiple petitions, wait, file a petition, orientation, diligence, follow-on, infringe, wearable, trainee