Just after making the NHK and Valve Corp decisions precedential, the Board distinguished them in Amazon. While NHK and Valve Corp resulted in denial, in Amazon the Board instituted trial despite Amazon having similar issues regarding parallel late stage district court litigation.

In IPR2018-01498, the Board considered patent owner’s Section 314 arguments regarding denial based on filing a petition late into the Section 315(b) period of a parallel district court litigation. ‘498IPR, Paper 13, pp. 7-11. The Board first stated: “The statute does not set forth any basis for treating petitions differently depending on which day within that year they are filed, nor does Patent Owner identify any authority supporting such an interpretation. Thus, the fact that the Petition was filed near (but before) the end of the § 315(b) period does not, by itself, support denial of institution.” Id. at p. 8. Then noted that “Petitioner acknowledges that it waited to file the Petition ‘to try to better understand the asserted claims, the bases for the infringement allegations [by Patent Owner], and to identify relevant prior art.’ … whether that can be characterized as seeking ‘tactical advantage’ … we are not persuaded it constituted improper conduct or warrants denial of institution.” Id. at pp. 8-9.

Finally, the Board did not find that being in discovery was “late stages” as defined in NHK and other decisions stating they “agree with Petitioner that the present case is distinguishable from both NHK and Mylan…In NHK, the corresponding district court case was ‘nearing its final stages’ in that the district court had already issued claim constructions, and expert discovery was set to end in less than two months…Similarly, in Mylan, the related district court case was in an ‘advanced stage’ in that the district court had already issued claim constructions, and the trial date was less than four months away.” Id. at pp. 10.

This article appeared in the May 2019 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.