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Canon Inc (via Public) / Canon announces conclusion of toner supply container-related patent in …
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Canon announces conclusion of toner supply container-related patent infringement disputes in U S International Trade Commission and in U S District Court
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The U.S. Patent and Trademark Office (Patent Office) designated new Patent Trial and Appeal Board (Board) precedents protecting patent owners from multiple inter partes review (IPR) challenges. The Board decisions included one that concerned the identification of a real party in interest (RPI) and when multiple petitions challenging the same patent are not permitted.
In
RPX Corp. v. Applications in Internet Time, LLC,
1 the Board held that the petitioner, RPX, was time-barred because its client Salesforce was an unnamed RPI that was served with an infringement complaint more than one year before RPX filed the petition.
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The results of a recent update to the PTAB Multiple Petition Study show Petitioners face an uphill battle when attempting to utilize a multiple petition strategy. These results, discussed during the December 10, 2020 Boardside Chat, show a notable decrease in the success rate of both serial and parallel petitions filed in the past few years. A “serial” petition, as defined in the study, involves the same petitioner filing petitions on the same patent more than ninety days apart. A parallel petition, on the other hand, is defined as petitions filed by the same petitioner, on the same patent, less than or at ninety days apart. While there are some circumstances where petitioners have found success, petitioners generally should not count on multiple bites at the apple.
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The PTAB’s denial of Apple’s attempt to join Microsoft’s IPR suggests increased hurdles for copycat petitions.
TAKEAWAYS
Serial petitions will be heavily scrutinized and often denied using the General Plastic factors, even when the second petition seeks to join a previously instituted trial.
The PTO is considering promulgating rules governing discretionary denials, and sought public comments for such rules, (85 Reg. 66502) which were due on Dec. 3, 2020, published
The PTAB may use its discretion to deny “me-too” or “copycat” petitions seeking joinder in an already instituted proceeding by considering the General Plastic factors.
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