Patent Lawyer Blog
The U.S. Patent Trial and Appeal Board (PTAB) has denied Petitioner’s Shenzhen Waydoo Intelligence Technology Co., Ltd.’s petition for inter partes review (IPR) and accompanying motion for joinder in a case involving MHL Custom, Inc.’s Patent No. 9,359,044 B2.
The decision, issued on December 17, 2024, centers on Waydoo’s attempt to join an existing IPR challenge (IPR2024-00086) filed by Foil Boarding Company. The Board’s denial primarily stemmed from two key factors: Waydoo’s previous unsuccessful challenge to the patent’s validity in district court and the company’s unexplained three-and-a-half-year delay in seeking IPR review.
Importantly, Waydoo had already contested the ‘044 patent’s validity in a previous district court case using substantially similar grounds, including the same prior art references (Evolo Report and Woolley). In that case, a jury not only upheld the patent’s validity but also found that Waydoo had willfully infringed it.
The Board emphasized that Congress intended inter partes reviews to serve as alternatives to district court litigation, not additional venues for repeated challenges. The decision referenced the House Report on the America Invents Act, which explicitly warned against using IPR proceedings as “tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks.”
The Board found particular significance in Waydoo’s failure to explain why it waited more than three years after being served with the initial infringement complaint before filing its IPR petition. Under normal circumstances, petitioners must file IPR challenges within one year of being served with an infringement complaint, though this deadline can be waived for joinder requests.
The case bears strong similarities to Code200 v. Bright Data Ltd. (IPR2021-01503), where the Board similarly denied a “me too” petition that came years after the petitioner’s invalidity claims were addressed in litigation. The Board distinguished this case from others where joinder was permitted, such as instances where validity wasn’t previously litigated or where the patent owner didn’t oppose the joinder.
This decision reinforces the PTAB’s commitment to preventing parties from using IPR proceedings as a second bite at the apple after unsuccessful district court challenges, particularly when significant time has elapsed and no justification for the delay is provided.
This inter partes review was decided by Administrative Patent Judge Michael L. Woods writing for a panel that included Judges Bart A. Gerstenblith and Kevin W. Cherry. Shenzhen Waydoo Intelligence Technology Co., Ltd. v. MHL Custom, Inc., Case No. IPR2024-00998, Paper 13 (PTAB Dec. 17, 2024).
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.