Valve v. Electronic Scripting Products (IPR2019-00062): General Plastic and Related Petitioners

Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, -00063 and -00084 (Paper 11, 2019), addressed a question left open by General Plastic: do the follow-on petition factors apply only when the same petitioner files again, or can they reach a different petitioner? The Board designated the decision precedential. Designations can change, so readers should check the USPTO’s current list of precedential and informative decisions.

This note is limited to the decision’s core holding. The full decision text was not available for this page, so procedural details beyond that holding are left out.

Background

The petitions challenged a patent owned by Electronic Scripting Products. An earlier petition against the same patent had been filed by HTC. Valve and HTC had both been accused of infringing that patent as co-defendants. Valve’s petitions came after HTC’s challenge.

The first General Plastic factor asks whether “the same petitioner” previously filed a petition directed to the same claims of the same patent. Valve was not the same petitioner, so the question was whether the factors, and the concerns behind them, applied at all. For the factors themselves, see the note on General Plastic v. Canon.

What the Board decided

The Board held that the General Plastic factors can apply when the later petitioner is different from the earlier one, if there is a significant relationship between them. Here, the relationship arose because Valve and HTC had been co-defendants accused of infringing the same patent. In those circumstances, the Board treated the fairness and efficiency concerns behind General Plastic as relevant even though the names on the petitions differed.

Weighing the factors in light of that relationship, the Board exercised its discretion under 35 U.S.C. § 314(a) and denied institution.

Why it matters

Valve means that co-defendants and other related parties cannot avoid the serial-petition analysis by filing in a different name. The Board’s analysis turned on the relationship between the two challengers rather than on whether they were the same entity. Questions of real party in interest and privity remain a separate issue under the statute; see who is the real party in interest in an IPR or PGR.

For parties sued on the same patent, the decision highlights the value of coordinating early, since a later challenge by one defendant may be judged in light of an earlier challenge by another. For how discretion interacts with the statutory thresholds, see the different threshold standards.

The USPTO’s discretionary-denial practice has changed repeatedly since this decision. Readers should check current USPTO guidance and decisions before assuming how the Board will treat related petitioners today.

Key takeaways

• Valve v. Electronic Scripting Products (precedential) applied the General Plastic factors to a different petitioner.
• The key was a significant relationship with the earlier petitioner, HTC: both had been accused of infringing the same patent as co-defendants.
• The Board denied institution under its § 314(a) discretion.
• Discretionary-denial practice has changed often; check current USPTO guidance.