St. Louis patent litigator Doug Robinson spoke recently to Matthew Bultman at Law360 about the Patent Trial and Appeal Board’s denial to institute Comcast’s challenge against a Rovi patent as redundant.

The PTAB pointed out that Comcast filed two petitions against Rovi’s patent directed to an interactive TV system and said that instituting both would be inefficient. Although filing multiple challenges to attack a single patent from several angles is a somewhat common strategy, the PTAB’s move in this case hints toward denying these types of redundant challenges in the future.

Aside from improving efficiency before the board, the decision also promotes fairness for patent owners who will no longer need to divert their resources to manage multiple proceedings. The decision may also lead to fewer petitions from multiple different challengers, and it could limit the ability of challengers to reuse old arguments.

Robinson views the decision in light of the common viewpoint that the PTAB has been unfair to patent owners. “The PTAB is walking back a little bit in procedural ways, finding ways to allow really only one challenge in an IPR to a patent,” he says. “While the board hasn’t gone quite that far yet, that’s the direction that things are trending right now.”

For challengers, though, the biggest question over a denial based on redundancy is if it will trigger the estoppel provision. Historically, estoppel only triggers when the PTAB issues a final decision. If the board does not institute a review, challengers are able to retry their arguments in district court.

In a PTAB case that was appealed to the Federal Circuit, Shaw Industries v. Automated Creel, the Federal Circuit held that estoppel did not apply to arguments that the PTAB denied hearing. It may bode well for challengers, but it is also too soon to say for sure if all future rulings will follow the same path. If they do, patent challengers could still be motivated to file multiple petitions for review because there will be no threat of estoppel inhibiting them from reusing arguments in district courts.  The downside of such a path, though, is that if the PTAB only institutes on one petition, it might not be on the one the petitioner would have preferred, according to Robinson.

If estoppel does apply, though, challengers could be more limited in the arguments and strategies they can bring in the petition stage.

In short, the current trends at the PTAB and the state of estoppel law make pre-filing strategy a critical part of any IPR proceeding.

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