General Plastic Factors Lead to Institution Denial

by | Mar 8, 2024 | PTAB News, PTAB Trial Basics, Trial Institution

By Carl Kukkonen –

The Patent Trial and Appeal Board (PTAB) in Videndum Production Solutions, Inc. v. Rotolight Limited (IPR2023-01219), recently denied a petition for inter partes review (IPR) of a patent on a lighting system and control for producing cinematic lighting effects.  The PTAB exercised its discretion under 35 U.S.C. § 314(a) and 37 C.F.R § 42.108(a) to reject the petition, which was the second one filed by the same petitioner against the same patent.  The PTAB applied the factors set forth in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha (IPR2016-01357), a precedential decision that guides the PTAB’s discretion to deny follow-on petitions.

The patent at issue, U.S. Patent No. 10,197,258 B2 (the ‘258 patent), is owned by Rotolight Limited, a British company that specializes in LED lighting products for photography and videography. The ‘258 patent claims a lighting system and controller that can simulate various lighting effects, such as fire, lightning, or flickering, by calculating and outputting time varying lighting values based on user input. The ‘258 patent was previously challenged by two other IPR petitions, one filed by Arnold & Richter Cine Technik GmbH & Co. Betriebs KG (ARRI), a German manufacturer of motion picture equipment, and one filed by Videndum Production Solutions, Inc. (Videndum), a U.S. subsidiary of a British company that provides products and services for the broadcast and media industry.

The first IPR petition, filed by ARRI in September 2021, asserted the same prior art references that Videndum later relied on in its second petition.  The PTAB instituted the IPR based on ARRI’s petition, but the proceeding was terminated in January 2023 after the parties filed a settlement agreement. The second IPR petition, filed by Videndum in December 2021, asserted different prior art references than ARRI’s petition. The PTAB denied institution of the IPR based on Videndum’s petition, finding that Videndum had failed to show a reasonable likelihood of prevailing on the merits.

In July 2023, Videndum filed its second IPR petition, challenging the same claims of the ‘258 patent based on the same prior art references that ARRI had asserted in its first petition. Rotolight opposed the petition, arguing that the PTAB should exercise its discretion to deny institution under the General Plastic factors. The PTAB agreed with Rotolight, and denied Videndum’s second petition.

The PTAB analyzed the seven General Plastic factors, which are:

  1. whether the same petitioner previously filed a petition directed to the same claims of the same patent;
  2. 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;
  3. 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;
  4. 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;
  5. 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;
  6. the finite resources of the Board; and
  7. 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 the General Plastic factors to evaluate whether the petition is an unfair or inefficient use of the IPR process.

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Carl Kukkonen

Partner at Jones Day
An acknowledged leader in the profession, Carl Kukkonen has nearly 20 years of experience in strategic intellectual property counseling. He advises clients on patent infringement and validity, preparation and prosecution of patent applications, and brand protection matters.