Similar Claims in Prior IPR Petition Leads to Denial

by | Jan 28, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Derek Walker, Evan Tassis, and Matt Johnson –

The PTAB recently denied institution of inter partes review of a patent directed to deep packet inspection in software defined networks in Juniper Networks, Inc. v. Orckit Corporation, IPR2024-00895. Applying the General Plastics factors which guide the PTAB’s discretion to deny follow-on petitions, the PTAB found that Petitioner’s previously filed petition on different but similar claims to the present petition weighed in favor of dismissal.

The patent at issue, U.S. Pat. No. 10,652,111 (the ’111 patent), was previously challenged by two other IPR petitions, one of which was filed by Petitioner for purposes of joinder.  On March 26, 2024, the first IPR was instituted and challenged claims 1-31 of the ’111 patent. On May 6, 2024, before the PTAB issued a final decision in the first IPR, Petitioner filed a second IPR petition challenging claims 32-54 of the ’111 patent.  This second petition asserted different prior art references from the first IPR petition.

The PTAB analyzed this second petition under the seven General Plastics 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

The PTAB determined that the first six factors weighed in favor of denial of institution and the last factor was neutral.

First, the PTAB observed that Petitioner joined a previous IPR challenging claims 1-31 of the same patent. While the new petition covered claims 32-54, the PTAB found that at least several of these claims were “substantially similar in scope” to the claims of the prior IPR. Comparing the language of the claims from the first IPR with the current IPR, the PTAB determined that Juniper “filed a petition directed to materially the same claims.”

Second, the PTAB determined that Petitioner was aware of the asserted prior art at the time of filing of the first petition because the asserted prior art was previously cited by a patent examiner in the prosecution of Petitioner’s patents.

Third, the PTAB explained that Petitioner already received the Patent Owner’s response in the first petition, and Petitioner already filed a reply before filing this petition.

Fourth, applying its finding from the second factor, the PTAB determined that Petitioner had knowledge of the prior art for years before filing this petition and Petitioner provided no evidence that it was diligent in its preparation of the current petition.

Fifth, in similar fashion as factors two and four, the PTAB determined that Petitioner did not adequately explain the time lapse between petitions given its knowledge of the prior art.

Sixth, the PTAB determined that institution would not be an efficient use of the PTAB’s resources because the claim language was so similar between petitions, and a final written decision had already issued in the first petition.

Lastly, the PTAB determined the final factor was neutral because a final decision already issued in the previous petition, and thus the present petition would not interfere with the requirement to issue a final determination within one year of institution.

Takeaway:  Parties are reminded to be diligent when filing a subsequent IPR petition challenging the same patent and to consider the language of asserted claims in an earlier petition even when different claims are asserted in a later filed petition because claims substantially similar in scope may be considered materially the same in the PTAB’s analysis of the General Plastic factors.

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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.