PTAB Allows Three Concurrent IPR Petitions for Unusual Patent Claims

by | Apr 25, 2025 | PTAB News, PTAB Trial Basics

By Shane Padilla and Matt Johnson –

Recently, the Patent Trial and Appeal Board (“the Board”) was persuaded to consider the merits of three out of seven concurrent petitions for an inter partes review of a single patent due to the patent’s complicated claiming structure involving multiple dependencies.  Apple Inc. v. Smith Interface Techs., LLC, IPR2024-01086, Paper 10 (Feb. 13, 2025).

In June 2024, Apple Inc. (“Petitioner”) filed seven concurrent petitions requesting an inter partes review of U.S. Patent No. 10,656,754 (“the ’754 patent”), which describes a method in which a signal is received in association with a device’s touch interface, thereby altering the user experience for users of the device.  Petitioner submitted a Ranking Notice for its petitions, each of which challenged independent claim 2 of the ’754 patent, among others, on the single ground that the challenged claims would have been obvious over a combination of two references, either alone or with minimal additional references.

Petitioner argued that seven petitions were necessary to address each of the ninety-one challenged claims at issue, particularly because nearly all of the challenged claims depend from independent claim 2.  Due to the significant overlap across the petitions, Petitioner was required to repeat its contentions for claim 2, totaling approximately 8,350 words, in each petition prior to addressing the other challenged claims.  Petitioner asserted that the constraint imposed by its limited remaining word count was “further compounded by the fact that most of the challenged claims include multiple dependencies and many claims include features recited in other claims.”

Smith Interface Technologies, LLC (“Patent Owner”) responded that the Board should discretionarily deny all but two of the petitions.  Patent Owner cited the PTAB Consolidated Practice Guide’s instruction that one petition is typically sufficient to challenge a patent’s claims and that, in rare cases where more than one petition is necessary, it is unlikely that three or more petitions with respect to a particular patent will be appropriate.  Patent Owner further argued that Petitioner did not attempt to consolidate, organize, or otherwise abridge its arguments to efficiently challenge the claims, specifically as to its repeated contentions for claim 2.

The Board agreed with Petitioner that more than one petition was necessary based on Patent Owner asserting 166 claims in its co-pending district court litigation, ninety-one of which were unique claims challenged in the petitions.  However, the Board ultimately denied institution of all but the top three ranked petitions for inter partes review, finding that Petitioner’s repeated 8,350 word contentions were unnecessarily extensive.  The Board explained that Petitioner failed to justify the lengths of these sections in light of, among other things, claim 2 being only fifteen lines long and describing “relatively simple” technology.  Moreover, Petitioner failed to show that it efficiently organized the challenged claims in regard to its word limit constraints or otherwise streamlined its petitions for brevity.

Despite Petitioner’s inefficiencies, the Board was “persuaded that this group of cases is somewhat extraordinary and, consequently, that more than two petitions are justified.”  It explained that “[s]eparating the claims into different petitions is complicated by the ’754 patent’s unusual claiming structure (which includes several layers of dependencies) and by the presence of substantially similar limitations in different claims.”  Nonetheless, the challenged claims were not “excessively long or technologically complex,” and the Board concluded that a discretionary denial of all but the top three ranked petitions was appropriate.

Takeaway:  Although limited to rare circumstances, the Board may allow multiple concurrent petitions requesting an inter partes review of a single patent, particularly when the patent owner has asserted a large number of claims in litigation.  In these cases, it is unlikely that the Board will allow more than two to three petitions, and petitioners should make effective use of Ranking Notice to prioritize the most important petitions at issue.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.