Try-and-Try-Again Is a Recipe for Failure When Petitioning the Patent Trial and Appeal Board

Whether an Inter Partes Review (IPR) will be instituted is at the discretion of U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“the Board”). Usually when the Board declines a petition requesting an IPR, it is due to there being insufficient support for at least one challenged claim being unpatentable. Less developed are the Board’s standards for declining petitions based on equity and fairness. One question has been how many bites-at-the-apple does a petitioner get when filing multiple petitions asking for review of a same patent claim.

 

The Board’s November 28 decision in Alarm.Com Inc. v. Vivint, Inc. denying institution of an IPR attempts to provide practitioners some guidance. The Board assembles a list of eight factors they use in deciding whether to exercise their discretion. 

 

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