Valve Corp. v. Elec. Scripting Prods., Inc.

When a different petitioner has joined an ongoing, instituted inter partes review of the same claims of the same patent and then files its own follow-on petitions, the Board applies the first General Plastic factor ("whether the same petitioner previously filed a petition directed to the same claims of the same patent") because joinder counts as having filed a petition on those claims. The Board may weigh the General Plastic factors, including any relationship between the petitioners, when different petitioners challenge the same patent, and may deny institution under 35 U.S.C. § 314(a). Here all seven factors weighed against institution. The decision applies and extends the precedential General Plastic Industries Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 15–16 (PTAB Sept. 6, 2017) (Paper 19), by treating a joined petitioner as one that previously filed a petition under factor 1. It follows Valve I (IPR2019-00062, Paper 11). A petitioner that joins an instituted IPR cannot count on filing separate follow-on petitions with different art. The Board can deny them, particularly where the petitioner used the institution decision as a roadmap, waited months, and shares a close relationship with the original petitioner. A patent owner can cite joinder, co-defendant status, licensor or licensee alignment, and delay to support denial under § 314(a). The Board relied on Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016), for the Director's discretion to deny institution. LEGAL TEST OR STANDARD: The non-exhaustive General Plastic factors: 1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner's preliminary response to the first petition or received the Board's decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. When different petitioners are involved, the Board considers any relationship between them while weighing the factors. TRIGGERING FACTS: Valve joined HTC's instituted IPR (the 1032 IPR) on the same claims 1–21 of the '935 patent, then filed three more petitions about five months after HTC's petition. Valve and HTC were co-defendants accused over HTC's VIVE devices, which incorporate technology licensed from Valve, and Valve had been voluntarily dismissed from the suit. Valve knew of Welch-HiBall, which HTC relied on. Valve could have found the other references with reasonable diligence. It had HTC's preliminary response and the institution decision before filing. It did not substantially explain why more challenges were needed, and it faced a possible § 315(e)(1) estoppel dispute. Valve's Click-to-Call explanation did not excuse the delay. KEY QUOTE: "By joining the ongoing 1032 IPR, Valve has filed a petition previously directed to the same claims of the same patent under the first General Plastic factor." (Paper 10, p. 10) PRIOR PRECEDENT AFFECTED: Applies and follows General Plastic Industries Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 15–16 (PTAB Sept. 6, 2017) (Paper 19) (precedential). Follows Valve Corp. v. Elec. Scripting Prods., Inc., Case IPR2019-00062 (PTAB April 2, 2019) (Paper 11) ("Valve I"), finding the efficiency concerns weigh even more strongly here. Cites NetApp Inc. v. Realtime Data LLC, Case IPR2017-01195, slip op. at 10 (PTAB Oct. 12, 2017) (Paper 9), for using the General Plastic factors when a different petitioner files. PRACTICE TIP: A party considering a challenge to a patent already under instituted IPR should file at or near the same time as the first petitioner, or seek joinder with all of its grounds. If it files a follow-on petition after joining, it should explain in the petition why the additional grounds are necessary and why the delay was justified. A patent owner should use the preliminary response to show the petitioner's relationship to the earlier petitioner and its use of the earlier decisions as a roadmap.