On
The '257 is directed to an electronic cardiac sensor that can allegedly be "integrated in any suitable portion" of an electronic device. The '257 patent's drawings provide a schematic view of an electronic device for receiving the output of one or more sensors (Fig. 1). The patent also provides a schematic view illustrating the elements of an electronic device with integrated leads suitable for detecting the user's cardiac activity (Fig. 3). Masimo, Paper 7 at 3-4.
Before the IPRs,
The PTAB primarily relied on General Plastic factor 3 to deny institution. Factor 3 asks "whether at the time of filing of the second petition the petitioner already received the POPR to the first petition or received the Board's decision on whether to institute review in the first petition." Id., Paper 7 at 18 (citing General Plastic). Petitioner argued that the third factor was neutral because its second IPR was addressed to different claims and relied on new prior art references. Masimo, IPR2024-00071, Paper 2 at 81-82. Patent Owner responded that the timing of the second petition weighed against institution because the timing would create "unfairness, inefficiency, and potential for abuse." Id., Paper 6 at 10. Additionally, Patent Owner asserted that Petitioner had bolstered its prior art analysis in direct response to the POPR in the first IPR and weaknesses identified there. Id. at 11-13, 19-20.
The PTAB agreed with Patent Owner, stating that it had "significant 'road mapping' concerns." Id., Paper 7 at 19. When the second petition was filed, Petitioner had the benefit of the POPR and institution decision in the first. Also, and although Patent Owner did not allege that Petitioner had relied on it, see id., Paper 6, the PTAB noted that Petitioner had the benefit of Patent Owner's POPR in another IPR with a different petitioner challenging the '257 patent. Id., Paper 7 at 20. The PTAB concluded that new embodiments in Petitioner's second petition and its responsive modifications to its claim 1 (from which claim 6 depends) arguments suggested that Petitioner was using earlier proceedings as a roadmap to address issues it had not addressed in its first petition.
Thus, the PTAB discretionarily denied review under 35 U.S.C. § 314(a).
Takeaways:
Petitioners filing a second IPR request on the same patent should carefully consider whether responding to concerns raised during the first IPR will lead to denial because of road mapping concerns. Patent Owners responding to a second request for IPR should clearly identify any modifications challengers make that appear responsive to issues that arise in the first IPR.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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