Common Ownership Exception Leads To Petition Denial

The PTAB recently denied Trend Micro, Inc.'s (Petitioner) inter partes review petition against Open Text, Inc. and Webroot, Inc. (Patent Owners) challenging all claims of U.S. Pat. No. 8,201,243. Trend Micro, Inc. v. Open Text, Inc., IPR2023-01390, Paper 17 (PTAB Feb. 14, 2024). Specifically, the PTAB found that a primary reference included in every ground was commonly owned by the same person (Webroot), and therefore 35 U.S.C. § 103(c)(1) disqualified this reference as prior art. Id. at 8.

The '243 patent relates to systems and methods of detecting, controlling, and removing pestware, such as programs that collect information about a person or an organization. Id. at 2. In the petition, both of Trend Micro's asserted grounds challenged the '243 patent using a Piccard reference (U.S. Pat. Pub. No. 2007/0006310), which Trend Micro relied on for its asserted unpatentability of all claims. Id. at 6. In its preliminary response, Open Text argued that Piccard