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How Close Are They? PTO Looking for “Significant Relationship” Between Sequential IPR Petitioners

Addressing the issue of whether to discretionally deny a petition for inter partes review (IPR) under the General Plastics factors when there is no “significant relationship” between the petitioners, the Director of the US Patent & Trademark Office (PTO) vacated the Patent Trial & Appeal Board’s decision denying institution. Videndum Prod. Sol., Inc. v. Rotolight Ltd., IPR2023-01218 (PTO-Ofc. of Dir., Apr. 19, 2024) (Vidal, PTO Dir.)

Videndum filed a petition requesting IPR challenging claims of a patent owned by Rotolight. In its Patent Owner’s Response, Rotolight argued to the Board that it should exercise its discretion to deny institution under 35 U.S.C. § 314(a), citing the Board’s 2017 precedential decision in General Plastic. Prior to Videndum’s petition, the Board instituted review of the same patent at the request of another party. However, one month prior to oral argument in that proceeding, the parties to that IPR proceeding jointly moved to terminate the proceeding on the basis of a settlement. The Board granted the parties’ joint petition.

In the present case, a split Board denied Videndum’s petition for institution, reasoning that Videndum’s petition was a “follow on” of the prior proceeding, and citied General Plastic even while conceding that the “Petitioner’s reliance on [the] earlier-filed petition …, even ‘as a menu and roadmap’” is not sufficient “to create ‘a significant relationship’ that favors denial under the first General Plastic factor.” The dissent agreed on that point but argued that the “General Plastic factors as whole weigh against exercising discretion to deny institution.”

Videndum requested Director review of the Board’s denial of institution based on an abuse of discretion argument. The Director granted review.

The Director found error with the Board’s application of the General Plastic factors in situations where the second-in-time petition is not by the same party that filed the first petition or by a party having a “significant relationship” with the first filer.

The General Plastic factors generally deal with how the Board should analyze whether to institute a subsequent petition on the same patent. Factor one explicitly asks whether the two petitioners are the same. However, the application of the General Plastic factors “is not limited solely to instances when multiple petitions are filed by the same petitioner.” But, when the factors are applied to different petitioners, they have been applied to petitioners who have a “significant relationship” with each other.

Here, both the parties and the Board agreed that there is not a “significant relationship” between the two petitioners. As the Director noted, the PTO has never extended the General Plastic factors “to any cases in which the first and second petitioners do not have a significant relationship.” The Director found the Board’s unprecedented extension of the General Plastics factors to be “improper[],” vacated the Board’s decision, and remanded the case with an instruction to the Board majority to “address the merits of the Petition.”

Practice Note: Patent owners fighting institution of an IPR by a subsequent petitioner should allege facts emphasizing the relationship between the two [...]

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PTO Director Lays Out Limits on “Roadmapping” as Factor for Discretionary IPR Denials

Exercising its discretion under 35 U.S.C. § 314(a), the Patent Trial & Appeal Board (Board) denied institution of two inter partes reviews (IPRs) based on its understanding of its own precedential 2017 decision in Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha. US Patent & Trademark Office Director Kathi Vidal subsequently reversed the Board’s ruling in a precedential sua sponte decision clarifying how to apply the seven factors set forth in General Plastic. Code200, UAB v. Bright Data, Ltd., IPR2022-00861; -00862, Paper 18 (PTAB Aug. 23, 2022) (Vidal, Dir. of PTO).

In General Plastic, the Board addressed the practice of filing seriatim petitions attacking the same patent, where each petition raises a new ground for invalidity. The Board considers the General Plastic factors when determining whether to deny IPR institution to ensure efficient post-grant review procedures and prevent inequity. The seven factors are as follows:

  1. Whether the same petitioner previously filed a petition directed to the same claims of the same patent
  2. Whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it
  3. Whether at the time of filing of the second petition the petitioner had already received the patent owner’s preliminary response to the first petition or had received the Board’s decision on whether to institute review in the first petition
  4. The length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition
  5. Whether the petitioner provided adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent
  6. The finite resources of the Board
  7. The requirement under 35 U.S.C. § 316(a)(11) to issue a final determination no later than one year after the date on which the PTO Director notices institution of review.

In denying institution in this case, the Board explained that the petitioner’s failure to stipulate that it would not pursue the same grounds in district court “weigh[ed] strongly in favor of exercising discretion to deny institution and outweigh[ed] the fact that the Board did not substantively address the merits of the prior petition.” Director Vidal disagreed, reasoning that when a first petition is not decided on its merits, a follow-on petition affords a petitioner the opportunity to receive substantive consideration. Director Vidal further explained that factor 1 “must be read in conjunction with factors 2 and 3.” Application of factor 1 in a vacuum strips context from a petitioner’s challenges and creates an inappropriate bright-line rule for denying institution.

Proper application of the General Plastic factors requires consideration of the potential for abuse by a petitioner. Director Vidal noted the problem of “roadmapping” raised in General Plastic (i.e., using one or more Board decisions to create a roadmap for follow-on filings until the petitioner finds a ground that results in institution). A denial decision based solely on the [...]

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