Metro Detroit patent litigator Glenn Forbis spoke to Matt Bultman at Law360 about a possible new trend at the Patent Trial and Appeal Board involving the institution of Inter Partes Review proceedings.

Several recent PTAB decisions have demonstrated an effort to deny IPR institution to challengers who are involved in parallel litigation.

The reason?

Fairness. The vast majority of patents in IPR proceedings are also involved in litigation in district courts, the International Trade Commission, or elsewhere. Particularly when it comes to individual challengers, the PTAB has denied institution in order to cut down on the number of challengers who are essentially waiting in line to invalidate a single patent. These challengers are “gaming the system” by adapting their strategy based on previous outcomes.

Many patent owners and patent attorneys are encouraged by the PTAB’s decision to shine a spotlight on these bullying tactics, as evidenced by Shenzhen Silver Star Intelligent Technology Co. Ltd v. iRobot Corp. “More than ever before there’s a good basis and an incentive for patent owners to challenge institution based on equitable grounds,” says Forbis.

In September’s NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc. decision, the PTAB declined to institute review because the patent owner was set to take the would-be challenger to trial over infringement. “Plaintiffs want a judgment on the patent sooner rather than later,” Forbis said. “To institute IPR at that stage would be unfair to the plaintiff and a waste of resources.”

While some are heartened by the trend, many are hopeful that it will lead to a consistent framework that attorneys and patent challengers can follow — perhaps one that expands on the factors developed in last year’s General Plastic v. Canon Kabushiki.

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