Lessons Learned: Director Emphasizes Patent Quality in Evaluating General Plastic Factors – Patent – USA – Mondaq | Jewelry Dukan

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In the precedent Gen. Plastic Industry. Co. vs. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB 6 Sep 2017), the PTAB formulated seven non-exclusive factors to consider before refusing a subsequent IPR application against the same patent at its discretion. Director Vidal revisited the recently
General plastic post-initiation factors so spontaneous Director reviews Board decisions to reject certain applications in its sole discretion. See Code200, UAB, et al. v Bright Data Ltd.IPR2022-00861 and IPR2022-00862, Paper 18 (PTAB 23 August 2022) (Vidal Decision), at 6 (cited Cuozzo Speed ​​Techs., LLC v. Lee579 US 261, 272 (2016) (quoting HR Rep. No. 112-98, pt. 1, at 45, 48) (hereinafter “Code200“). Based on the Director’s review and resulting decision, she reversed the Board’s decisions and remanded them for further review and reaffirmed “the Board’s mission to improve patent quality and confidence in the presumption of validity that I granted patents, to restore.”

General plastic Believing that the PTAB may, in its sole discretion, deny a request pursuant to 36 USC §§314(a), and establishes the following non-exclusive factors that the Board of Directors will consider in determining whether to exercise its discretion, the initiation to refuse a review to address multiple, serial petitions:

(1) whether the same applicant has previously filed a request directed to the same claims of the same patent;

(2) whether the applicant knew or should have known, at the time of filing the first application, the prior art claimed in the second application;

(3) whether, at the time of filing the second request, the requester has already received the patent proprietor’s preliminary answer to the first request or the Boards’ decision to initiate a review of the first request;

(4) the length of time that elapsed between the time the request learned of the prior art claimed in the second request and the filing of the second request;

(5) whether the applicant provides an adequate explanation for the time elapsed between the filing of multiple requests directed to the same claims of the same patent;

(6) the limited resources of the Board of Directors; and

(7) the requirement under Section 316(a)(ii) to make a final determination no later than one year from the date the Director announces the establishment of the review.

General plastic at 9-10.

To review the board resolution in Code200the Director disagreed with the Committee’s finding that “the petitioner’s failure to: a Sand Revolution II Provision “strongly weighs in for the exercise of discretion to deny establishment and outweighs the fact that the Board did not address the substance of the merits of the previous request.”Code220, at 4 (footnote omitted) (citing 12 December). notice that General plastic Factor 1″ must be read in conjunction with Factors 2 and 3[,] The director stated that “[w]Here, the first petition submitted under factor 1 was rejected at its own discretion or otherwise not evaluated on the merits. Factors 1-3 only warrant discretionary disapproval if there are road mapping concerns under factor 3 or other concerns under factor 2. ” ID.under 5. Such roadmapping concerns arise when “follow-up petitions would give petitioners the opportunity to strategically stage their prior art and arguments across multiple petitions by
[the Board’s] Decisions as a roadmap until a reason is found that leads to the granting of a review.” ID. (quote
General plastic, at 17). In the underlying decisions, the board found “no indications of a timetable[]’ and the director stated that such roadmapping concerns are ‘minimised’ if a later petition ‘is not refined based on lessons learned from later developments’.

Ultimately, the Director determined that Factors 1, 2 and 3 did not favor a discretionary denial of subsequent motions as the Board did not address the substance of the first motion submitted and there were no road mapping or other related concerns There were concerns about fairness. Factors 2, 4, 5 and 7 were found to be of limited relevance, and factor 6 – the ‘board’s finite resources’ – was rated as ‘outweighed by the board’s mission to improve patent quality’. ID. at 6.

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