Director_PTABDecision_Review@uspto.gov
`571-272-7822
`
`Paper 18
`Date: August 23, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE
`FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED
`STATES PATENT AND TRADEMARK OFFICE
`
`
`
`CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB;
`OXYSALES, UAB; and CORETECH LT, UAB,
`Petitioner,
`v.
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)1
`
`
`
`
`
`
`
`Before KATHERINE K. VIDAL, Under Secretary of Commerce for
`Intellectual Property and Director of the United States Patent and
`Trademark Office.
`
`
`
`
`
`
`DECISION
`Ordering Rehearing, Vacating the Decision Denying Institution, and
`Remanding to the Patent Trial and Appeal Board Panel for Further
`Proceedings
`
`
`
`
`1 This Order applies to each of the above-listed proceedings.
`
`
`
`
`571-272-7822
`
`Paper 18
`Date: August 23, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE
`FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED
`STATES PATENT AND TRADEMARK OFFICE
`
`
`
`CODE200, UAB; TESO LT, UAB; METACLUSTER LT, UAB;
`OXYSALES, UAB; and CORETECH LT, UAB,
`Petitioner,
`v.
`BRIGHT DATA LTD.,
`Patent Owner.
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)1
`
`
`
`
`
`
`
`Before KATHERINE K. VIDAL, Under Secretary of Commerce for
`Intellectual Property and Director of the United States Patent and
`Trademark Office.
`
`
`
`
`
`
`DECISION
`Ordering Rehearing, Vacating the Decision Denying Institution, and
`Remanding to the Patent Trial and Appeal Board Panel for Further
`Proceedings
`
`
`
`
`1 This Order applies to each of the above-listed proceedings.
`
`
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`
`INTRODUCTION
`I.
`On July 25, 2022, the Patent Trial and Appeal Board (PTAB or
`Board) issued Decisions Denying Institution of Inter Partes Review in
`IPR2022-00861 and IPR2022-00862, which also denied joinder of these
`proceedings with, respectively, IPR2021-01492 and IPR2021-01493.
`IPR2022-00861, Paper 17 (Decisions or Dec.2); IPR2022-00862, Paper 17.
`As is relevant to this Order, the Board denied institution under 35 U.S.C.
`§ 314(a), exercising the Board’s discretion to deny institution as set forth in
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper
`19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i) (General Plastic).
`Dec. 16.
`In its Decisions, the Board determined that the factors articulated in
`General Plastic weighed in favor of exercising discretion to deny institution
`under § 314(a). Dec. 10‒11. Addressing factor 1 of General Plastic
`(“whether the same petitioner previously filed a petition directed to the same
`claims of the same patent”), the Board acknowledged the Petitioner’s
`argument that similar patentability challenges the Petitioner previously
`asserted in prior petitions3 were “not evaluated on the merits, and instead the
`
`
`2 The analyses set forth in the Decisions in IPR2022-00861 and IPR2022-
`00862 are substantially similar. Accordingly, all citations are to IPR2022-
`00861, unless otherwise noted.
`3 IPR2020-01266 and IPR2020-01358 were filed on July 14, 2020, and
`July 28, 2020, respectively, by the same Petitioner in these proceedings.
`IPR2020-01266, Paper 5, 2, 73; IPR2020-01358, Paper 5, 2, 78. The Board
`exercised its discretion to deny institution under 35 U.S.C. § 314(a) based on
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020)
`(precedential) (Fintiv). IPR2020-01266, Paper 18, 7, 12 (December 23,
`2020); IPR2020-01358, Paper 11, 6, 11 (February 2, 2021).
`
`2
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`denial[s were] based on discretionary grounds.” Id. at 11–12 (citing Paper
`13, 2). The Board explained, however, that the Petitioner’s failure to offer a
`stipulation agreeing not to raise the grounds asserted in these inter partes
`reviews (IPRs) in related district court litigation “weigh[ed] strongly in favor
`of exercising discretion to deny institution and outweigh[ed] the fact that the
`Board did not substantively address the merits of the prior petition[s].” Id. at
`12. The Board further analyzed factors 2–7 of General Plastic and
`determined to exercise discretion under 35 U.S.C. § 314(a) to deny
`institution. See id. at 12–16.
`I have considered the Board’s Decisions Denying Institution of Inter
`Partes Review, and I initiate a sua sponte Director review of those decisions
`to clarify the application of General Plastic. See Interim process for
`Director review §§ 13, 22 (providing for sua sponte Director review and
`explaining that “the parties to the proceeding will be given notice” if
`Director review is initiated sua sponte).4
`II. DISCUSSION
`General Plastic holds that the Board may deny a petition based on the
`discretionary authority of 35 U.S.C. § 314(a). General Plastic at 8. General
`Plastic sets forth non-exclusive factors for the Board to consider when
`determining whether to exercise discretion under § 314(a) to deny institution
`of review in order to address multiple, serial petitions:
`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
`
`4 Available at https://www.uspto.gov/patents/patent-trial-and-appeal-
`board/interim-process-director-review.
`
`3
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`
`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.
`General Plastic at 9‒10.
`
`In applying factor 1, the Board held that the Petitioner’s failure to
`submit a Sand Revolution II stipulation5 “weighs strongly in favor of
`exercising discretion to deny institution and outweighs the fact that the
`Board did not substantively address the merits of the prior petition.” Dec. 12.
`I respectfully disagree. As the Board recently held, “allowing [a petitioner]
`the opportunity to pursue a decision on the merits” in a second-filed petition,
`when the first-filed petition was not evaluated on the merits, “best balances
`the desires to improve patent quality and patent-system efficiency against
`
`5 The Board noted that the “Petitioner here had the guidance provided by
`Sand Revolution II, and could have proffered such a stipulation, but did not
`do so.” Dec. 12.
`
`4
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`the potential for abuse of the review process by repeated attacks on patents.”
`Intel Corp. v. VLSI Tech. LLC, IPR2022-00366, Paper 14 (June 8, 2022), 9–
`10. Holding otherwise would undercut the congressional grant to the United
`States Patent and Trademark Office of “significant power to revisit and
`revise earlier patent grants” as a mechanism “to improve patent quality and
`restore confidence in the presumption of validity that comes with issued
`patents.” Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 272 (2016)
`(quoting H.R. Rep. No. 112-98, pt. 1, at 45, 48).
`
`General Plastic factor 1 must be read in conjunction with factors 2
`and 3. Where the first-filed petition under factor 1 was discretionarily denied
`or otherwise was not evaluated on the merits, factors 1–3 only weigh in
`favor of discretionary denial when there are “road-mapping” concerns under
`factor 3 or other concerns under factor 2. As General Plastic noted with
`regard to road-mapping:
`Multiple, staggered petitions challenging the same patent and
`same claims raise the potential for abuse. The absence of any
`restrictions on follow-on petitions would allow petitioners the
`opportunity to strategically stage their prior art and arguments in
`multiple petitions, using our decisions as a roadmap, until a
`ground is found that results in the grant of review.
`General Plastic at 17.
`Here, the Board found “no evidence of road-mapping.” Dec. 13.
`Indeed, “road-mapping” concerns are minimized when, as in this case, a
`petitioner files a later petition that raises unpatentability challenges
`substantially overlapping with those in the previously-filed petition and the
`later petition is not refined based on lessons learned from later
`developments.
`
`5
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`
`Although the Board considers factors 2, 4, and 5 “to assess and weigh
`whether a petitioner should have or could have raised the new challenges
`earlier” (General Plastic at 18), factor 2 may also be relevant to the
`consideration of factors 1 and 3. That said, the Board correctly found here
`that factors 2, 4, and 5 “have limited relevance.” Dec. 13. I similarly find
`factor 7 to “have limited relevance,” as the Board noted that “the one year
`statutory time period may be adjusted for a joined case under 35 U.S.C.
`§ 316(a)(11).” Dec. 16.
`Although the Board determined that it is inefficient to expend Board
`resources on this proceeding, under factor 6 (Dec. 14–15), I respectfully
`disagree. Rather, the Board’s mission “to improve patent quality and restore
`confidence in the presumption of validity that comes with issued patents”
`outweighs the impact on Board resources needed to evaluate the merits of a
`petition. Cuozzo Speed Techs., 579 U.S. at 272.
`Given that (1) the first-filed petition, pertinent to factor 1, was
`discretionarily denied and the Board did not substantively address the merits
`of the prior petition; (2) there is no evidence of “road-mapping” related to
`factor 3 or other concerns of fairness related to factor 2; (3) factors 2, 4, and
`5 were found to have limited relevance when it comes to a determination as
`to whether arguments should have been raised earlier; and (4) I find factor 7
`to have limited relevance and factor 6 to be outweighed by the Board’s
`mission to improve patent quality, the Patent Owner’s concerns of fairness
`are outweighed by the benefits to the patent system of improving patent
`quality by reviewing the merits of the challenges raised in the petitions,
`which have not been addressed to date. See General Plastic at 16 (citing
`H.R. Rep. No. 112-98, pt. 1, at 40 (2011)).
`
`6
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`
`No additional briefing from the parties is authorized. See Interim
`process for Director review § 13 (explaining that the Director may give the
`parties an opportunity for briefing if Director review is initiated sua sponte).
`The cases are remanded to the panel to consider the Patent Owner’s
`remaining arguments, including those for discretionary denial under Fintiv
`and against the merits of the Petitioner’s patentability challenges.
`III. ORDER
`Accordingly, based on the foregoing, it is:
`ORDERED that sua sponte Director review of the Board’s Decisions
`Denying Institution and Decisions Denying Motion for Joinder (IPR2022-
`00861, Paper 17; IPR2022-00862, Paper 17) are initiated;
`FURTHER ORDERED that the Decisions Denying Institution and
`Decisions Denying Motion for Joinder are vacated;
`FURTHER ORDERED that the cases are remanded to the panel for
`further proceedings consistent with this Decision; and
`FURTHER ORDERED that the panel reconsider joinder after
`reconsidering the institution decisions.
`
`
`7
`
`
`
`IPR2022-00861 (Patent 10,257,319 B2)
`IPR2022-00862 (Patent 10,484,510 B2)
`
`FOR PETITIONER:
`
`George “Jorde” Scott
`John Heuton
`CHARHON CALLAHAN ROBSON & GARZA, PLLC
`jscott@ccrglaw.com
`theuton@ccrglaw.com
`
`
`
`
`FOR PATENT OWNER:
`
`Thomas Dunham
`Elizabeth O’Brien
`CHERIAN LLP
`tomd@ruyakcherian.com
`elizabetho@ruyakcherian.com
`
`8
`
`
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