Vidal Says PTAB Improperly Expanded Discretionary Denial Principles

United States Patent and Trademark Workplace (USPTO) Director Kathi Vidal on April 19 vacated a decision of the Patent Trial and Attraction Board (PTAB) that had denied establishment of an inter partes evaluation (IPR) for a lighting system patent owned by Rotolight Restricted.

Videndum Manufacturing Options challenged claims 1–19 of U.S. Patent No. 10,845,044 B2 through IPR and Rotolight argued the petition ought to be discretionarily denied beneath the elements set forth in Common Plastic Industries Co., Ltd. v. Canon Kabushiki Kaisha.

The PTAB on January 25, 2024, exercised its discretion to disclaim establishment as a follow-on of a earlier petition on the identical patent filed by Arnold & Richter Cine Technik GmbH & Co. Betriebs KG (“ARRI”), which the Board had instituted. The ARRI petition was, nonetheless, dismissed following a joint movement by the events as a result of settlement.

Though nearly all of the Board within the Videndum choice to disclaim establishment acknowledged that the primary Common Plastics issue weighed strongly in opposition to denial since there was no “vital relationship” established between ARRI and Videndum, it in the end discovered that “the proof and circumstances as complete weigh in favor of denying establishment on this case.” One administrative patent decide (APJ) dissented, explaining that “the bulk didn’t take into consideration sure information that weighed in opposition to exercising discretion.”

Vidal granted Director Assessment and vacated the choice based mostly on “current USPTO coverage and precedent,” which she stated teaches that “the place, as right here, the primary and second petitioners are neither the identical social gathering, nor possess a big relationship beneath Valve [Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062], Common Plastic issue one essentially outweighs the opposite Common Plastic elements.”

The Director Assessment choice went on to say that the PTAB’s denial “improperly expanded the discretionary ideas set forth in Common Plastic and Valve to use to petitioners that aren’t the identical and shouldn’t have a “vital relationship.”

“As a result of I agree that the document right here establishes that Videndum and ARRI shouldn’t have a big relationship, exercising discretion to disclaim the Petition shouldn’t be justified,” Vidal sais.

The choice was printed sooner or later after Vidal introduced a Notice of Proposed Rulemaking (NPRM) that proposed codifying a number of modifications round PTAB practices, together with serial and parallel petitions practices, guidelines for briefing on discretionary denial requests, termination and settlement agreements, and the elements for consideration of discretionary denials. As a part of that NPRM, the Workplace proposed to use the frequent regulation ideas of “actual social gathering in curiosity” and “privity” to discretion within the serial petition context, arguing that this strategy “carries out Congress’s need that the Director steadiness considerations about harassment in exercising discretion.”