PTAB Decides Concurrent IPR and PGR Petitions After Resolving Priority Date Dispute

By Lisa Furby and Anneli Kawaoka –

In anticipating a dispute over whether the America Invents Act would apply, Petitioner MPL Brands NV, Inc. (“MPL”) filed concurrent petitions for both inter partes review and post-grant review of U.S. Patent No. 11,932,441 (“’441 patent.”).  MPL Brands NV, Inc. v. BuzzBallz, LLC, No. PGR2024-00035, Paper 3, at 2.  In support of the two filings, MPL cited to the PTAB Consolidated Trial Practice Guide for “the need for multiple petitions ‘when there is a dispute about priority date.’”  Id. at 4 (citing Consolidated Trial Practice Guide at 59 (Nov. 2019)).

Under the AIA, PGR is available to any patent that contains—or references any patent or application that contains—a claim with an effective filing date after March 15, 2013.  AIA § 3(n)(1).  Here, MPL argued that the ’441 patent is an AIA patent; therefore, MPL asked the PTAB to institute PGR and deny its IPR petition as moot.  MPL, No. PGR2024-00035, Paper 3, at 4.  MPL argued that the AIA applied to the ’441 patent for two reasons.  First, MPL asserted that, under AIA § 3(n)(1)(A), several of the ’441 patent’s claims included new matter with a November 10, 2023, priority date.  MPL, No. PGR2024-00035, Paper 10, at 13.  Second, MPL argued that under AIA § 3(n)(1)(B), “the ’441 patent claims priority under 35 U.S.C. § 120 to a design patent application that contained a claim to an invention that has an effective filing date after March 15, 2013,” and therefore qualified as an AIA patent.  Id.  The design patent application at issue, U.S. Application No. 29/824,813 (the “’813 application”), was filed on January 27, 2022.  Id. at 17.

After reviewing the prosecution history of the ’813 application, the PTAB was persuaded by MPL’s second argument and concluded that the AIA applies to the ’441 patent.  Id. at 23.  As originally filed, the ‘813 design patent application included an alteration to the drink container’s pop-top design that differed from that of its parent application.  Id. at 17–18.  Consequently, the examiner objected to the ’813 application as a continuation of the parent application and examined the application under the AIA.  Id. at 18–19.  Though the applicant amended the ’813 application to resolve the examiner’s objection, the PTAB concluded that, “as initially filed,” the ’813 application contained a claim unsupported by the parent application.  Id. at 23.  Therefore, the ’813 application contained a claim to an invention with an effective filing date after March 13, 2013, rendering the ’441 patent an AIA patent.  Id.; AIA § 3(n)(1)(B).

After determining the ’441 patent an AIA patent, the PTAB denied institution of the IPR petition and granted institution of the PGR petition.  MPL, No. PGR2024-00035, Paper 10, at 35–49.

Takeaway: Concurrent PGR and IPR petitions continue to be a viable approach where a dispute over the priority date of the challenged patent is anticipated.