On May 7, 2019, the Patent Trial and Appeal Board (the “Board”) designated the following two cases as being precedential: Valve Corp. v. Elec. Scripting Prods., Inc., Case IPR2019-00062, -00063, -00084, Paper 11 (PTAB Apr. 2, 2019, “Valve Corp.”), and NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., Case IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018, “NHK Spring.”). These decisions were related to a refusal to hold administrative trials on patent challenges.

In Valve Corp, the decision denied inter partes review after applying factors from the case General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha (“General Plastic”). This decision denied an attempt by Valve Corporation to institute a review of a patent, via three petitions. The Board with an argument made by Electronic Scripting Products Inc., saying that Valve Corp.’s attempted institution of a review was an unfair follow-on to an earlier petition from HTC Corporation. HTC Corporation had earlier been sued for patent infringement, along with Valve Corp., by Electronic. In designating this decision as precedential, the Board asserted that, when different petitioners look to challenge the same patent, relationships that exist between those petitioners may be considered by the Board, in addition to the factors from the General Plastic case.

In this particular case, the Board determined that not only was there a relationship, but that there was a “significant relationship between Valve and HTC with respect to Patent Owner’s assertion of the ‘934 patent” (the patent in question). “The complete overlap in the challenged claims and the significant relationship between Valve and HTC favor denying institution.”

In NHK Spring, the decision was made to deny institution under 35 U.S.C. 325(d) after applying factors from the case Becton, Dickinson. The Board determined that it would be an inefficient use of the Board’s resources if instituting review, where the district court proceeding was nearing its final stages, and where the Board proceeding would involve the same factors as would be used in the district court. According to section 325(d), the Board is given express discretion to deny a petition when “the same or substantially the same prior art or arguments previously were presented to the Office.”

The Board, additionally, determined that although the Petitioner in this case argued against, “the findings the Examiner made during prosecution and the arguments Petitioner makes here are substantially the same” and that “both rely upon prior art values…” such that the “facts and circumstances here” would not be substantially different. Again, as in Valve Corp., the Board denied institution.

The Valve Corp decision can be read at: https://www.uspto.gov/sites/default/files/documents/Valve%20Corp.%20v.%20Elec.%20Scripting%20Prods.%20Inc.%20IPR2019-00062%2000063%2000084%20%28Paper%2011%29.pdf

The NHK Spring decision can be read at: https://www.uspto.gov/sites/default/files/documents/NHK%20Spring%20Co.%20Ltd.%20v.%20Intri-Plex%20Techs.%20Inc.%20IPR2018-00752%20%28Paper%208%29.pdf

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