The Patent Trial and Appeal Board (PTAB) in
The patent at issue,
The first IPR petition, filed by ARRI in
In
The PTAB analyzed the seven General Plastic factors, which are:
- whether the same petitioner previously filed a petition directed to the same claims of the same patent;
- 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;
- whether at the time of filing of the second petition the petitioner already received the patent owner's preliminary response to the first petition or received the Board's decision on whether to institute review in the first petition;
- 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;
- whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent;
- the finite resources of the Board; and
- the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.
The PTAB found that all of the factors weighed in favor of denying institution, and that the evidence and circumstances as a whole showed that Videndum's second petition was a serial and repetitive attack that implicated the efficiency concerns underpinning General Plastic. The PTAB noted that Videndum knew of the prior art asserted in its second petition when it filed its first petition, and that it had the opportunity to use the Board's previous decisions regarding challenges to the '258 patent as a roadmap for its second petition. The PTAB also noted that Videndum failed to provide an adequate explanation for the time elapsed between the filing of its first and second petitions, which was over 19 months. The PTAB further noted that instituting an IPR based on Videndum's second petition would require the PTAB to start another proceeding, on the same grounds as raised before, from the very beginning, thus duplicating much of the PTAB's and Rotolight's efforts exerted in the previous proceeding.
Takeaway:
The PTAB's decision in this case illustrates the importance of filing a well-supported and timely IPR petition, and the risks of filing a follow-on petition that relies on the same or similar prior art and arguments as a previous petition. The PTAB has the discretion to deny such petitions, and will apply theGeneral Plasticfactors to evaluate whether the petition is an unfair or inefficient use of the IPR process.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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