When a particular patent is involved in an inter partes review (IPR) proceeding or other post-grant review proceeding, the USPTO has wide discretion in determining whether to allow an additional proceeding to be instituted or continued. The two governing statutes are 35 U.S.C. §315(d) and 35 U.S.C. §325(d), each of which states that “the Director may determine the manner in which the . . . matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter.”
In many instances, the Patent Trial and Appeal Board (PTAB) denies institution of a subsequent IPR. In this regard, even when “a petitioner establishes a reasonable likelihood of prevailing with respect to at least one challenged claim,” the PTAB may decide against instituting the subsequent proceeding. Conopco v. Procter & Gamble, IPR 2014-00506, Paper No. 25 at page 4 (Decision Denying Request for Rehearing). Even if a subsequent proceeding regarding a particular patent is requested by a different petitioner, the PTAB has discretion to deny institution for “efficient administration.” See Unified Patents v. PersonalWeb Technologies, IPR 2014-00702, Paper No. 13.
On June 13, 2016, the Patent Trial and Appeal Board (PTAB) entered its first Final Written Decision in a Post Grant Review (PGR) proceeding. The PTAB found that the Petitioner had failed to show unpatentability based on prior art, but the PTAB agreed with the Petitioner that all claims are directed to unpatentable abstract ideas under 35 U.S.C. § 101.
US Patent No. 8,660,88 (the ‘888 patent) is directed to a system, method, and computer-readable medium for evaluating a relative market value of a cattle sale group. In the PGR, the Petitioner relied on two grounds that are not available in an Inter-Parties Review (IPR) proceeding.