Jones Day
On the 22nd of August 2024, Hulu, LLC (Hulu) filed two separate petitions to inter partes review (IPR) U.S. Patent No. Piranha Media Distribution, LLC (“Piranha”) is the assignee of U.S. Patent No. 11,463,768 (the “‘768 patent”). The ‘768 Patent describes digital systems that allow for the display and insertion of advertisements in media content. Each petition challenged the claims as obvious under 35 U.S.C. SS 103, in light of different prior art combination. Piranha had asserted its ‘768 Patent in the Central District of California against Hulu, where the court in September entered a final judgement holding the challenged claims inadmissible under 35 U.S.C. SS 101. In the IPR, there was disagreement between the parties regarding the propriety and necessity of the two petitions that challenged the same claims. Hulu argued the separate petitions are necessary because of the large number (28) of challenged claims and the material differences in the two petitions. Piranha, on the other hand, stressed that PTAB only entertains separate petitions to challenge the same claims in rare cases–not merely if a petitioner has different prior art combinations. The PTAB rejected that argument, noting that Hulu is not a real party in interest with Unified and does not have a special relationship with Unified. The PTAB dismissed that argument, noting that Hulu is not a real party in interest with and does not have a special relationship with Unified.
Piranha also contended that the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-0019 (PTAB Mar. The PTAB dismissed this argument, noting that Hulu is not a real party in interest with Unified and does have a special relationship with it. The PTAB considered the six non-exclusive Fintiv factors, which include: 1) whether a stay was granted by the court or evidence that one could be granted if the proceeding is instituted; 2) proximity of trial date of court to Board’s projected statutory deadline for a final written decision; 3) investment in parallel proceeding by both parties and courts; 4) overlap between issues raised in petition and parallel proceeding; 5) whether petitioner and defendant are same party. The PTAB considered six non-exclusive Fintiv criteria, including: 1) whether a court granted a temporary stay or there is evidence that one could be granted if a proceeding is instituted, 2) proximity of the trial date of the court to the Board’s projected statutory deadline of a written decision, 3) investment by the court and parties in the parallel proceedings, 4) overlap of issues raised in both the petition and the parallel proceeding, 5) whether petitioner and defendant in parallel proceeding are the exact same party, and 6) The PTAB argued that the contested claims are still subject to judicial review on appeal of the district courts invalidity determination, and that the parties have invested minimally in issues of claim construction and discovery. The PTAB noted that there was no concern of inefficient duplication or inconsistent results, and that there was no overlap with issues pertaining SS 101 – a statutory basis that could not be raised before the PTAB. The Board declined the evaluation of the sixth factor. It noted that the “compelling” merits factor is only considered when the other five factors are in favor of discretionary denial. The Patent Owner requested Director Review of that decision. Id. Id. The decision stated that “[Hulu]ecause patent claims already stand as invalid, it is not necessary to institute another proceeding in order to review them for their patentability on other grounds.” At 2. The decision stated that, if the District Court’s ruling is reversed, “Petitioner can raise such invalidity claims in the district courts on remand”, should this determination be reversed. Id. Id. The decision acknowledged that its analysis under Fintiv in this situation “doesn’t fit neatly,” cited “efficiency concerns,” and concluded that “the efficiency and integrity of patent system are best served by denying institutionalization.” The decision rescinding institution has been designated as informative. The decision rescinding institution has been designated as informative.
Takeaway
Patent Owners should use the procedural mechanisms currently available to identify circumstances where a PTAB trial may not be the most efficient expenditure of the legal system’s resources.
