A Large Number of Means-Plus-Function Limitations Justifies Parallel Petitions Challenging Different Claims of Same Patent on Same Grounds

DJI Europe B.V. v. Daedalus Blue LLC, IPR2020-01474, Paper 14 (PTAB Feb. 12, 2021); DJI Europe B.V. v. Daedalus Blue LLC, IPR2020-01475, Paper 14 (PTAB Feb. 12, 2021).
Before: Grossman, Jeschke, and Peslak.

The Board instituted trial on these parallel petitions, which asserted the same grounds against the same patent, but on different claims. The petitions covered all claims asserted in a parallel district court litigation. The 1474 petition was directed to six method and five computer product claims and the 1475 petition was directed to five system claims. The Petitioner asserted that parallel petitions were necessary because there were forty-two claim limitations in means-plus-function format in the five system claims. Patent Owner did not respond to Petitioner’s assertion that two petition were necessary. The Board held that even though patent owner had not asserted a large number of claims in the parallel litigation, in view of the large number of means-plus-function limitation and the absence of any response from Patent Owner to Petitioner’s Explanation of Parallel Petitions, the Board would institute both petitions.

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