Patent Lawyer Blog
The Patent Trial and Appeal Board (PTAB) has denied Juniper Networks’ second petition for inter partes review (IPR) challenging claims of Orckit Corporation’s US Patent 10,652,111, which covers deep packet inspection methods in software-defined networks. The decision, issued on December 11, 2024, was based on the Board’s discretionary powers under 35 U.S.C. § 314(a).
The Board’s denial relied heavily on the precedential General Plastic factors, which are non-exhaustive and guide decisions about multiple petitions against the same patent. In a detailed analysis of those factors, the Board found that Juniper’s second petition targeted essentially the same claims as its first petition, despite Juniper’s arguments to the contrary. The Board conducted a careful comparison of the challenged claims 32-54 with previously challenged claims 1-31, determining that they were either identical or had no material differences in scope.
Significantly, the Board found evidence that Juniper was aware of the prior art references (Lefebvre, Chua, and Rash) cited in its second petition long before filing its first petition. Patent Owner Orckit provided documentation showing Juniper’s knowledge of these references dating back to 2016-2020, contradicting Juniper’s unsupported assertion of recent discovery.
The timing of Juniper’s second petition also worked against it. The petition was filed on May 6, 2024, after the institution decision in the first IPR (IPR2024-00037) had been issued and that proceeding had been joined with an earlier Cisco IPR. By this point, the Patent Owner Response and Petitioner’s Reply had already been filed in the joined proceeding.
The Board concluded that considering largely identical claims in a second proceeding would not be an efficient use of its resources, especially given that a final written decision had already been issued in the first IPR. While the one-year statutory deadline for completing the review was not a concern, the Board found that the balance of factors strongly favored denying institution.
The decision reinforces the PTAB’s commitment to preventing repeated challenges to the same or substantially similar patent claims without adequate justification by applying the General Plastic framework to manage serial petitions and preserve Board resources, while ensuring fairness in the IPR process.
Administrative Patent Judge Brent M. Dougal authored the decision, joined by Judges Kristen L. Droesch and Nathan A. Engels. Juniper Networks, Inc. v. Orckit Corporation, Case No. IPR2024-00895, Paper 15 (Dec. 11, 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.