- Videndum Production Solutions, Inc. v. Rotolight LimitedInstitution deniedPTAB · Jan 25, 2024 · IPR2023-01218 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of IPR challenging claims 1–19, finding that General Plastic factors 3–7 outweighed factors favoring institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“It is the “opportunity to morph positions along the way” that favors denying a second petition that is time-staggered relative to a first petition. General Plastic, Paper 19 at 9 n.13, 11 (Board’s emphasis). Petitioner had more than a mere opportunity to morph its positions. It is beyond dispute that Petitioner, in fact, accessed the trial record in IPR099 at least six months prior to filing the instant Petition. Ex. 1010 (Petitioner’s email dated January 14, 2023). Further, Petitioner leaves uncontested on this record Patent Owner’s assertion and evidence that Petitioner “bolstered arguments” in the Petition based on review of the trial record developed in IPR099. Prelim. Resp. 19–20 (identifying persuasive examples); see Reply 1–3 (declining to contest Patent Owner’s arguments or evidence on that point).” slip op. at 13
Discretionary denialPatents in suitUS 10,845,044 - Videndum Production Solutions, Inc. v. Rotolight LimitedInstitution deniedPTAB · Jan 24, 2024 · IPR2023-01219 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution of review of claims 1–22, exercising § 314(a) discretion because all General Plastic factors weighed against institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“[F]actor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. . . . Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review. All other factors aside, this is unfair to patent owners and is an inefficient use of the inter partes review process and other post-grant review processes. General Plastic, Paper 19 at 17–18 (internal citation and footnote omitted).” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“D. Summary As discussed above, the evidence of record shows that all of the General Plastic factors weigh against institution. Although no single factor is dispositive, the evidence and circumstances as a whole weigh strongly in favor of denying institution in this case. As a result, we determine that it is appropriate to exercise our discretion under § 314(a) to deny institution.” slip op. at 16
Discretionary denialPatents in suitUS 10,197,258 - Videndum Production Solutions, Inc. v. Rolight LimitedInstitution deniedPTAB · Jan 24, 2024 · IPR2023-01220 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of review of claims 1–21, exercising § 314(a) discretion because all General Plastic factors weighed against the serial petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Here, Petitioner was able to use the Board’s decision denying institution in IPR261 to learn that the art and arguments asserted in the first petition were insufficient for institution, which led Petitioner to find a different ground that would “result[] in the grant of review.” Id. In that regard, contrary to Petitioner’s assertion, Petitioner did modify the second petition in light of the institution decision in the first petition. See Reply 1. Moreover, as Patent Owner correctly notes, Petitioner was able to monitor the developments in the related IPR496 and use that information in preparing the Petition in this proceeding. Prelim. Resp. 27–30. The evidence of record thus shows that Petitioner was in a position to use the Board’s previous decisions regarding challenges to the ’257 patent as a roadmap—to avoid certain grounds and find others—for its second petition.” slip op. at 16
Discretionary denialPatents in suitUS 10,197,257 - 3M Company v. Bay Materials, LLCInstitution deniedPTAB · Jul 7, 2023 · IPR2023-00243 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution under General Plastic because 3M filed a staggered second petition challenging the same claims without explaining its nearly five-month delay.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Factors 4 and 5 Petitioner makes no attempt to explain its nearly five-month delay between filing the Petition in IPR215 and filing the instant Petition. Prelim. Resp. 21. As Patent Owner points out, the Petition in IPR215 expressly states Petitioner’s intention to file the instant Petition. Id. at 8, 23; IPR215, Paper 2 at 3. Petitioner provides “no explanation of its decision to wait” nearly five months to carry out that intention. Prelim. Resp. 23. An inadequately explained delay of similar length supported denial of institution in Valve, even where a different petitioner filed the second petition. Id. 21– 22 (citing Valve, Paper 10 at 15). Both the length of the delay (factor 4) and Petitioner’s failure to explain the delay (factor 5) favor denying institution.” slip op. at 10
Discretionary denialPatents in suitUS 10,870,263 - Metall Zug AG / Haag-Streit AG et al. v. Carl Zeiss Meditec AGRehearing deniedPTAB · Mar 4, 2021 · IPR2020-01074 · APJ Grace Karaffa Obermann · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution, finding no abuse of discretion in denying the follow-on petition under General Plastic.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When resolving a rehearing request, the Board reviews a decision on institution “for an abuse of discretion” (37 C.F.R. § 42.71(c) (2019)), which occurs when a “decision was based on an erroneous conclusion of law,” “clearly erroneous factual findings,” or “a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). Applying that standard, we deny the Rehearing Request.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“Accordingly, the Board found, “Standing alone, the sheer number of petitions (five), taken together with Petitioner’s unexplained and significant delay in filing the four follow-on petitions, supports an exercise of our discretionary denial powers.” Dec. 4. The Board supported that finding by an analysis of the factors that bear on the discretionary denial inquiry as set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential) (“General Plastic”). Dec. 4–10 (applying the General Plastic factors).” slip op. at 3
Discretionary denialPatents in suitUS 8,690,330
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.