Director Vidal Reels In Discretionary Denials Under Section 314(a)

by | Jun 4, 2024 | Prior Art Issues, PTAB News, PTAB Trial Basics, Trial Institution

By Sue Gerber and Matt Johnson –

Under 35 U.S.C. § 314(a), the PTAB has discretion to deny institution of an inter partes review.  In certain circumstances, the PTAB will discretionarily deny a petition because another petition challenging the same patent was filed previously.  General Plastic Industries Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017).  The PTAB considers seven factors in making this discretionary determination, including the first factor:  “whether the same petitioner previously filed a petition directed to the same claims of the same patent.”  Id. at 16.  Applying these factors is not, however, “limited to instances when multiple petitions are filed by the same petitioner.”  Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-0062, Paper 11 at 2, 9 (PTAB Apr. 2, 2019) (precedential).  The General Plastic analysis may apply to unrelated subsequent petitioners if they have a “significant relationship” with the prior petitioner..  Id. at 9-10.

In a recent decision granting director review, Director Vidal further reined in discretionary denials under Section 314(a).  Videndum Prod. Soln’s, Inc. v. Rotolight Ltd., IPR2023-01218, Paper 12 (PTAB Apr. 19, 2024); see also Forced Cooperation Between Rivals Does Not Create a “Significant Relationship,” Jones Day PTAB Blog Post (May 1, 2024).  In Videndum, a divided PTAB had exercised its discretion to deny institution of the Petition.  The majority agreed that there was no “significant relationship” between the two petitioners, but nonetheless evaluated all of the General Plastic factors and determined that “the evidence and circumstances as a whole weigh in favor of denying institution in this case.”  Videndum, Paper 12 at 5.  The dissent evaluated the factors differently and would not have denied institution.  Id.

The Petitioner sought director review.  Id.  In vacating the decision to deny institution, the Director set out a bright-line rule:  “where, as here, the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.”  Id. at 6.  She explained that while Valve extended the General Plastic framework to petitioners having a “significant relationship,” that framework has never been extended to any cases in which the first and second petitioners do not have a significant relationship.”  Id. (emphasis in original).

Applying the rule to this case when it was undisputed that the first and second petitioners had no significant relationship, the Director concluded that the majority had improperly expanded the discretionary principles in General Plastic and Valve and, thus, “exercising discretion to deny the Petition is not justified.”  Id. at 7.  The decision denying institution was vacated and remanded for further proceedings.  Id.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.