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The USPTO published its second update to the PTAB Trial and Practice Guide last month. The section addressing procedures for addressing multiple challenges to a patent is a new and noteworthy addition.
In the new section addressing "parallel petitions challenging the same patent" by the same petitioner, the Board states that, "one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns."
The Guide notes that "there may be circumstances in which more than one petition may be necessary" and provides examples of when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date. The new procedure requires that, when a petitioner files more than one petition challenging the same patent, the petitioner should rank the petitions and explain in its petition or in a separate filing the differences between the petitions, why the differences are material, and why the Board should exercise its discretion to institute additional petitions.
This change is puzzling given the complexities of many patents involved in PTAB challenges, the payment of fees for each petition being challenge, and the likelihood that the Guide will only result in further gamesmanship by plaintiffs. For example, plaintiffs will now likely try to delay revealing claim construction positions or claims being asserted even more in an effort to prevent any PTAB challenge of claims being asserted in litigation.
It remains to be seen what justifications will satisfy particular PTAB panels. Petitioners will need to carefully consider what reasons are most compelling, including for example competing claim constructions, the sheer number of claims at issue, the complexity of the technology, and priority issues.
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