Patent Lawyer Blog
In a recent decision highlighting the Patent Trial and Appeal Board’s growing concern with multiple petition practice, the PTAB has denied Apple’s inter partes review petition challenging Smith Interface Technologies’ patent, emphasizing that less can be more when it comes to IPR strategy.
The Board’s February 13, 2025 decision in IPR2024-01086 rejected Apple’s petition – one of seven parallel petitions filed against the same patent – marking a clear stance against what some practitioners call “petition flooding.”
“[I]n most situations, one petition is sufficient to challenge a patent’s claims,” the Board emphasized, quoting its Trial Practice Guide. While acknowledging that multiple petitions might sometimes be necessary, the Board stressed that “this should be rare.”
Key Takeaway: The numbers matter. In this case, Apple challenged 91 unique claims across seven petitions targeting U.S. Patent No. 10,656,754, which covers technology for navigating between user interfaces. While the Board agreed that multiple petitions were warranted given the scope, it found seven to be excessive.
Apple’s Argument Falls Flat
Apple attempted to justify its approach by arguing that word count limitations necessitated multiple filings. According to Apple’s ranking notice, common sections across petitions “require[d] approximately 8,350 words,” leaving only “about 5,650 words per petition” for specific invalidity arguments.
The Board wasn’t convinced. “Petitioner has not persuasively shown that so many words were actually required for these sections,” the decision stated, noting that “although we agree that the common sections needed to be repeated in each petition…we are not persuaded that the common sections required approximately 8,350 words.”
Notably, the Board pointed out that one of the three independent claims “is only fifteen lines long, and its technology is relatively simple, yet Petitioner’s analysis of this claim stretches for seventeen pages.”
Strategic Implications
- Quality Over Quantity: The Board expects concise, efficient arguments rather than verbose repetition
- Strategic Ranking: When filing multiple petitions, careful thought should be given to petition ranking
- Resource Management: The Board will consider whether petitioners have efficiently organized their challenges
“We are persuaded that this group of cases is somewhat extraordinary and, consequently, that more than two petitions are justified,” the Board acknowledged, but ultimately concluded that “institution of three of the seven petitions is appropriate.”
The decision serves as a reminder that while the PTAB will accommodate legitimate needs for multiple petitions, practitioners must justify their approach and demonstrate efficient use of the Board’s resources.
Final Impact
The Board’s decision to consider only the top three ranked petitions of the seven filed and deny the rest – including this lowest-ranked petition – signals a continuing trend of managing the PTAB’s docket through discretionary denials. This approach balances petitioners’ rights to challenge patents with the Board’s need to efficiently manage its resources.
For patent practitioners, the message is clear: when considering multiple petitions, make every word count and be prepared to justify the need for each additional petition. As this decision shows, more isn’t always better in IPR practice.
Administrative Patent Judge Juliet Mitchell Dirba authored the decision, joined by Judges Nathan A. Engels and Sharon Fenick. Apple Inc. v. Smith Interface Technologies, LLC, Case No. IPR2024-01086, Paper 10 (PTAB Feb. 13, 2025).
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.