Comcast can't take six shots against a Rovi patent in PTAB...

Gaston Kroub

Some defendants really love IPR’s. Take Comcast, for example. They are locked in a serious patent dispute with Rovi, including over Rovi’s US Pat. No. 9,578,363 (‘363 patent). In early 2018, Rovi asserted the ‘363 patent against Comcast in both district court and the ITC. In response, Comcast filed 6 IPR petitions against the ‘363 patent in November 2018. That’s right — six petitions to invalidate a single patent.

Six petitions on the same patent is unusual, to say the least. Unsurprisingly, the PTAB tried to force Comcast to streamline things, by issuing an order in April of this year asking that Comcast “provide a notice identifying a ranking of the six petitions in the order in which it wishes the panel to consider the merits, if the Board uses its discretion to institute any of the petitions, and a succinct explanation of the differences between the petitions, why the differences are material, and why the Board should exercise its discretion to consider instituting on more than one petition.” In response, Comcast ranked its petitions, choosing IPR2019-00284 as its favorite. Good choice, as the PTAB instituted that petition on all grounds.

But what of the 5 other petitions? In a series of decisions (e.g. here) this week, the PTAB decided that one IPR was enough, and that the “the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings” compelled denial of all 5 other IPRs. Critically, the instituted IPR had multiple grounds of invalidity for each challenged claim, while also sharing some prior art in common with the other 5 petitions. On balance, therefore, the PTAB determined that the “asserted differences between the petition in that proceeding and the Petitions addressed here are sufficiently material and in dispute to support the inefficiencies and costs associated with instituting an additional five inter partes reviews.”

Yes, the PTAB declined to institute 5 out of 6 of Comcast’s IPRs. At the same time, the PTAB did not say there was anything per se wrong with Comcast’s multiple attacks on a single patent, even as it paid lip service to the “potential for abuse of the review process” by filing multiple petitions. For Comcast, therefore, there is not much downside to the PTAB’s decision, especially since the ‘363 patent has already been deemed likely invalid. For Rovi - and other patent owners for that matter - there is little solace in the PTAB determining that 6 IPRs against a single patent is overkill in this particular case. For them, even one IPR can be deadly to their property rights…