Use Caution When Considering Multiple IPRs Against a Single Patent, PTAB Litigation Blog

Visit the Jones Day PTAB Litigation Blog.

The recent PTAB order in IPR2017-01427 is a cautionary tale for petitioners considering multiple IPRs against a single patent. On May 11, 2017, Facebook and WhatsApp filed the ’1427 IPR petition challenging claims 1-8 of U.S. Patent 8,995,433. The PTAB instituted the ’1427 IPR on December 4, 2017, and LG Electronics later joined the IPR. Previously, Apple had filed a separate challenge to the ’433 patent in IPR2017-00225, instituted on May 25, 2017, challenging claims 1-6 and 8 of the ’433 patent. On June 16, 2017, subsequent to filing the ’1427 IPR petition, Facebook and WhatsApp filed another IPR petition and requested joinder with the ’225 IPR. The joinder was granted. Thus, Facebook and WhatsApp were petitioners in two separate IPRs challenging the ’433 patent—the ’1427 IPR (challenging claims 1-8) and the ’225 IPR (challenging most of the same claims: 1-6 and 8)

Read the full article at