Redundant Grounds Not An Efficient Administration of Justice

Last month, the Patent Trial & Appeal Board (PTAB) issued an Order explaining that maintaining multiple, concurrent proceedings per patent presents a significant burden for the Board. More specifically, where the same claims are challenged across multiple, redundant petitions (i.e., pile-on), the Board pointed out that instituting trial across all redundant filings may undermine the Office’s ability to complete proceedings in a timely manner and places an unfair burden on the Patent Owner. 35 U.S.C. § 314(a).

That petition filer, which has filed numerous redundant petitions across a large patent portfolio, is now seeing the first of its redundant petitions being denied.

While utilizing separate petitions for word count purposes to address all claims, or to present true alternative arguments (such as differing claim constructions) remains an acceptable practice, piling on redundant grounds against the same claims is clearly not. In its first decision on the issue, the Board explained (here):

" In considering a balanced assessment of all relevant circumstances in the instant proceeding and assessing the equities of instituting multiple proceedings, we are not persuaded by Petitioner that institution of multiple, concurrent proceedings would promote the efficient administration of the Office or the integrity of the system. . . the present Petition was filed by the same petitioner and includes challenges to the same claims, i.e., claims 1–26, of the same patent . . . on the record before us, we do not find the differences between the asserted art and arguments to be sufficiently material to outweigh the inefficiencies and costs of instituting an additional proceeding.

(emphasis in original)

While not nearly as widespread a practice as many critics urge, this decision and those to come should put an end to the practice. I expect the Board to designate one of these decisions precedential in the weeks ahead.

Scott A. McKeown is an author of the Patents Post Grant