Dominion Deals a Second IPR Hand: Follow-on Petition After Board Denies First Amid Unsuccessful Collateral Attacks

Last October, the Board denied a salvo of five related IPR petitions—provoking the petitioner to file an Administrative Procedure Act (APA) challenge in the Eastern District of Virginia accusing the USPTO of exceeding the Office’s authority under the statute. See Complaint. (This isn’t the first time someone has attempted to collaterally attack a decision to institute, thus far to no avail.)

Much was at stake. Dominion was sued by competitor AutoAlert Inc. for infringement of five patents. In response, Dominion filed five IPR petitions and subsequently requested—and received—a stay of the litigation prior to the IPR institution decisions. The Board’s denial of all five petitions effectively signaled the end of the stay, leading to the collateral APA test. Judge Robert E. Payne denied the collateral attack (April 18, 2014) and the Federal Circuit a week later (April 24, 2014) denied a similar collateral writ of mandamus.

But the saga continues. In the underlying suit, the original complaint—filed Oct. 1, 2012—listed four patents. AutoAlert later amended the complaint April 23, 2013, to include U.S. patent 8,396,791 (the ’791 patent), issued less than a month prior. Dominion originally petitioned for, and was denied, IPR review on all five patents in August of 2013—leaving Dominion with a brief window between August and October 1 to refile the original petitions. They did not, and the § 315(b) one-year litigation bar date passed quietly for the first four patents while the collateral attacks proceeded apace in the Federal Circuit and the Eastern District of Virginia.

Demonstrating the lack of any denial’s preclusive effect and of the open questions regarding what qualifies as “service” under the § 315(b) bar, Dominion recently filed a second-round IPR petition just days within one year of the amended complaint adding the ’791 patent to the underlying lawsuit. See IPR2014-00684.

Dominion’s new petition applied a previously-denied secondary § 103 reference, Sheets, as a base § 103 reference in combination with a new reference, Kuttan, and a new expert declaration. Notably, the second petition looked to the “two limitation of independent claims 1 and 6” the Board had noted were “missing” from the first. Thus, the second petition responds directly to the reasoning of the first Board panel. Stay tuned!