On November 10, 2018, Comcast Cable Communications, LLC (Comcast) filed six inter partes review (“IPR”) petitions, each challenging claims 1–28 of Rovi Guides, Inc.’s (Rovi’s) U.S. Patent No. 7,827,585. In an unprecedented move, the panel requested that the Petitioner file a notice to (1) rank the six Petitions in the order in which it wished the panel to consider the merits, and (2) provide a succinct explanation of the differences between the Petitions. The Board also afforded the Patent Owner the opportunity to respond to the Petitioner’s ranking notice and offer its views as to “whether the differences identified by Petitioner are material and in dispute.” Ultimately, the Board instituted the first ranked petition and denied the other five.

Subsequently, different PTAB panels requested similar ranking notices when the Petitioner challenged the same patent in multiple concurrently filed petitions.

Originally published in the Chicago-Kent Journal of Intellectual Property - June 25, 2020.