The Patent Trial and Appeal Board (PTAB) granted a petitioner’s motion to dismiss its original petition, allowing the petitioner to terminate an inter partes review (IPR) proceeding and file a new petition where the petitioner originally had cited a patent that was not prior art, but had a corresponding pre-grant publication that was. Wavetamer Gyros, LLC v. Seakeeper Inc., Case No. IPR2017-01931 (PTAB, Jan. 9, 2018) (Paper 13) (Green, APJ).

Wavetamer filed two petitions to provoke IPR of two patents owned by Seakeeper. In each petition, Wavetamer cited a patent (Adams) (which, incidentally was also owned by Seakeeper) rather than the pre-grant publication (Adams PGPUB). While Adams PGPUB is prior art to both the challenged patents, Adams is not. Wavetamer moved to dismiss the original petitions and sought authorization to file amended petitions. In its motions, Wavetamer explained that its incorrect citation was an inadvertent technical mistake that would severely prejudice Wavetamer because of estoppel provisions, and argued that it deserved to have its case heard on merits.

Wavetamer further explained that Adams and Adams PGPUB had identical texts, and given that Adams is owned by Seakeeper, Seakeeper was aware that Adams PGPUB would have been prior art and that the requested termination and authorization to re-file corrected petitions would not affect the merits of Wavetamer’s invalidity arguments. Wavetamer also argued that General Plastic factors (General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case No. IPR2016-01357 (PTAB, Sept. 6, 2017) (Paper 16) (precedential)), weighed in favor of allowing institution of IPR for its corrected petition.

The PTAB granted the request to terminate, because doing so “at this stage increases the efficiency of the Board and the parties.” The PTAB declined to consider the General Plastic factors, however, noting that those factors are to be considered in evaluating follow-on petitions, and that it would be premature to rule on institution of IPR review based on the corrected petitions until those petitions are filed.

Practice Note: Petitioners should be cautious when multiple versions of the same text exist as publications. Petitioners would be well served to file all documents well in advance of the § 315(b) deadline, in case there is a need to self-terminate and re-file.