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ARTICLE · 04 NOVEMBER 2020

Follow On Petition Denied For Implicit "Significant Relationship"

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In doing so, the PTAB concluded that the Petitioner effectively tied together the interests of all of the petitioners.

United StatesIntellectual Property
Matthew Johnson
Matthew Johnson
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In Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550 (PTAB March 17, 2020) (Paper 8), the PTAB denied institution of inter partes review under 35 U.S.C. § 314, exercising its discretion to deny "follow-on petitions" challenging the same patent. In particular, the PTAB applied, inter alia, an "implicit" relationship analysis to determine whether the same petitioner previously filed a petition directed to the same claims of the same patent, reasoning that the Petitioner implicitly created a "significant relationship" between it and prior petitioners by using the prior petitions to draft its own petition.

Ericsson, Inc. ("Petitioner") filed a Petition to institute inter partes review of U.S. Patent No. 7,016,676 B2 ("the '676 Patent"), which is directed to an interface-control protocol method for a radio system, asserting that claims 1, 2, and 8 are unpatentable as obvious under 35 U.S.C. § 103. Petitioner asserted that the PTAB should not exercise its discretion

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