Trials@uspto.gov
`571-272-7822
`
`Paper8
`Date: March 31, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LUMENIS BE LTD.,!
`Petitioner,
`
`Vv.
`
`BTL HEALTHCARE TECHNOLOGIESA:S.,
`Patent Owner.
`
`IPR2021-01278, IPR2021-01285, IPR2021-01402, IPR2021-01403,
`IPR2021-01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127°
`
`Before BARBARA A.PARVIS, ZHENYU YANG,and DAVID COTTA,
`Administrative Patent Judges
`
`COTTA,Administrative Patent Judge.
`
`DECISION
`Dismissal Prior to Institution of Trial
`35 U.S.C. $314
`
`1 Further to Petitioner’s request, we have changedthe case caption to reflect
`that Lumenis Be Ltd., is the successor-in-interest of Lumenis Ltd. Paper 4.
`2 This Order addresses issues that are commonto each of these cases. We
`exercise our discretion to issue one Orderto be filed in each case. The
`parties are not authorizedto use this style heading for any subsequent
`papers.
`
`
`571-272-7822
`
`Paper8
`Date: March 31, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LUMENIS BE LTD.,!
`Petitioner,
`
`Vv.
`
`BTL HEALTHCARE TECHNOLOGIESA:S.,
`Patent Owner.
`
`IPR2021-01278, IPR2021-01285, IPR2021-01402, IPR2021-01403,
`IPR2021-01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127°
`
`Before BARBARA A.PARVIS, ZHENYU YANG,and DAVID COTTA,
`Administrative Patent Judges
`
`COTTA,Administrative Patent Judge.
`
`DECISION
`Dismissal Prior to Institution of Trial
`35 U.S.C. $314
`
`1 Further to Petitioner’s request, we have changedthe case caption to reflect
`that Lumenis Be Ltd., is the successor-in-interest of Lumenis Ltd. Paper 4.
`2 This Order addresses issues that are commonto each of these cases. We
`exercise our discretion to issue one Orderto be filed in each case. The
`parties are not authorizedto use this style heading for any subsequent
`papers.
`
`
`
`IPR2021-01278, IPR2021-01285, IPR2021-01402, IPR2021-01403,
`IPR2021-01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127
`
`In the period between August 5, 2021 and November10, 2021
`
`Lumenis Be Ltd.(“Petitioner”) filed a total of sixteen related petitions
`
`requesting inter partes review ofeight different patents. We have issued
`
`decisions denying institution for eight of these petitions. See IPR2021-
`
`01273, Paper 8; IPR2021-01275, Paper 8; IPR2021-01276, Paper 8;
`
`IPR2021-01279, Paper 8; IPR2021-01280, Paper 8; IPR2021-01282, Paper
`
`8; IPR2021-01283, Paper 8; IPR2021-01284, Paper 8. There are eight
`
`remaining petitions for which we have notyet issued an institution decision.
`
`On March18, 2022, Petitioner emailed the Board requesting
`
`authorization to file a Motion to Withdraw IPR2021-01278, IPR2021-01285,
`
`IPR2021-01402, IPR2021-01403, IPR2021-01404, IPR2021-01405,
`
`IPR2022-00126, and IPR2022-00127. Ex. 3001.3. BTL Healthcare
`
`Technologies A.S. (“Patent Owner”) opposed the request. Jd. On March22,
`
`2022, we held a teleconference to discuss Petitioner’s request and authorized
`each party brief the issue. Fx 2024, 2.5:4-17.4 Pursuant to our
`authorization, Petitioner filed a Motion to Dismiss and Terminate the
`
`Proceeding (Paper9, “Mot.”) and Patent Ownerfiled an Opposition to
`
`Petitioner’s Motion to Terminate (Paper 8, “Opp.”).
`
`Theparties do not dispute that we have discretionary authority to
`
`terminate the eight remaining proceedings. Mot. 1 (“The Board has
`999
`discretion to ‘grant, deny, or dismiss any petition or motion.’”) (quoting 37
`
`3 Petitioner’s email also requested termination of IPR2021-01279 and
`IPR2021-01284. Ex. 3001. Shortly after receipt of Petitioner’s request, we
`issued decisions denyinginstitution in those proceedings, rendering
`Petitioner’s request with respect to those cases moot.
`* For convenience, throughoutthis opinion, we cite to the papers and
`exhibits filed in IPR2021-01278. Similar papers were filed in each of the
`other captioned proceedings.
`
`
`
`IPR2021-01278, IPR2021-01285, IPR2021-01402, IPR2021-01403,
`IPR2021-01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127
`
`C.F.R. § 42.71(a)); Ex. 2024, 13 (“Patent Owneris not disputing that the
`
`Board hasdiscretion to terminate if it so chooses.”). Rather, the parties
`
`dispute whether we should exercise our discretion to allow Petitioner to
`
`withdraw the eight remaining Petitions.
`
`Petitioner submits that the groundsset forth in the remaining petitions
`
`are “substantially identical”to those in the eight petitions for which we
`
`denied institution. Mot. 2. According to Petitioner, if the Board were to
`
`issue decisions on the remaining petitions, it would simply be “repeating
`99 66
`
`itself? which would “serve no useful purpose for Patent Owner,”
`
`“provide
`
`no additional value to the public,” and “simply waste agency resources.” Id.
`
`Petitioner further argues that termination is appropriate because the
`
`proceedingis at a preliminary stage. Jd. at 1. Petitioner explains that at the
`
`timeit first raised the issue of termination to the board, the earliest statutory
`
`deadline for the remaining proceeding was“almost three weeks” away, and
`
`the latest was “more than two months away.” /d. at 3.
`
`Patent Ownerarguesthat “[t]aking Petitioner at its word, the Petition
`
`here ‘presents the same ultimate issues that have already been decidcd in the
`
`earlier denied petitions.’” Opp. 1 (citing Ex. 2024, 5:3 7). Thus, according
`to Patent Owner, “[i]ssuing an institution decision would require modest
`
`additional effort.” Jd. Patent Owner emphasizes the “great expense”it
`
`incurred in filing 16 preliminary responses andasserts that it “should obtain
`
`the benefit of its investment through public notice as to the merits of the
`
`petitions.” Jd. at 1,3. Patent Ownercontendsthat Petitioner bears the
`
`burden to establish good cause andasserts that Petitioner has not metthis
`
`standard because:
`
`(1) pre-trial briefing is complete; (2) institution decisions are
`imminently due (between two weeks and two months); (3) the
`
`
`
`IPR2021-01278, IPR2021-01285, IPR2021-01402, IPR2021-01403,
`_ IPR2021-01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127
`
`Board has invested significant resources addressing the relevant
`validity issues (same primary references, commonissues,etc.);
`(4) the parties have not reached any settlement agreement(see
`EX2025, 1-3); and (5) Petitioner continues to refuse to assure
`PO thatit will not attack the same patents again at the Office.
`
`Id. at 2.
`
`Webegin by considering how much workhas been donebythe panel
`
`and bythe parties in each of the proceedings at issue. From the parties’
`standpoint, all eight cases are fully briefed and nothing more remainsto be
`donein order for us to issue an institution decision. From the Board’s
`
`perspective, the panel in each proceeding has not completedits review of the
`record in all of the remaining cases. Based on the parties’ representations
`
`that there is substantial overlap in issues, we expect that the work required to
`
`prepare institution decisions would be diminished as comparedto writing on
`a blank slate.° That said, the panel for each case would still have to prepare
`
`eachcasein its entirety. The Board has more than a modest amount of work.
`
`Having considered the burden on the Board ofissuing eight more
`institution decisions, we next considerthe benefit of issuing institution
`decisions in the eight remaining cases. Asaninitial matter, the parties have
`not identified the challenged patents as being involved in active district court
`litigation. Paper 2, 3; Paper 3, 1. Accordingly, issuing an opinion would not
`
`facilitate resolution of issues presentedin district court.
`Patent Ownerargues that providinginstitution decisions would “help
`insulate [Patent Owner] from further attacks on its patents.” Opp. 1. Patent
`
`Owneracknowledges(id. at 3) that the Board has already issued precedent
`
`5 Because we have not completed our review ofthe record in all of the
`remaining cases, we havenotverified the parties’ assertions that already-
`decided issues are dispositive with respect to the still-pending cases.
`
`4
`
`
`
`IPR2021-01278, IPR2021-01285, IPR2021-01402, IPR2021-01403,
`IPR2021-01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127
`
`specifically addressing Patent Owner’s concerns regarding future attacks on
`
`its patents from Petitioner. See General Plastic Industrial Co., v. Canon
`Kabushika Kaisha, 1PR2016-01357, Paper 19, 16-17 (precedential)
`
`(recognizing “the potential for abuse of thc revicw process by repeated
`attacks on patents”andarticulating factors for panels to consider in
`determining whetherto institute on a patent that has previously been
`challenged, explaining “[o]ur intent in formulating the factors wasto take
`undue inequities and prejudices to Patent Ownerinto account”). Patent
`Ownernonetheless argues that whether the Board previously issued an
`
`institution decision is an importantfactorin that analysis. Opp. 3. Petitioner
`
`disagrees, contending that “the Board already decided the Petitioner’s
`groundsin earlicr, related procccdings” and “repeated issuance of a
`substantially same decision is a needlessly wasteful endeavor.” Mot. 1. At
`
`least with respect to future challenges from Petitioner, Patent Owner may
`
`rely on Petitioner’s statements. Wefind that issuing an opinion on the
`outstanding petitions would not place Patent Ownerin a materially better
`position underthe factors articulated in General Plastic than simply
`dismissing them.
`|
`Asto third-parties, Patent Owner contendsthat issuing opinions on
`
`the remaining patents would provide “public notice” “thereby deterring
`future serial and meritless attacks.” Opp. 3. We do not dispute that an
`issued opinion would provide notice to the public. However, we are not
`persuadedthat issuing aninstitution decision would provide substantially
`greater deterrent effect with respect to third-parties than a withdrawn
`petition, particularly when coupled with the already-issued eight related
`decisions denying institution on issues that the parties seem to agree are
`dispositive with respect to the remaining petitions.
`In addition, we note that
`
`
`
`IPR2021-01278, IPR2021-01285, IPR2021 -01402, IPR2021-01403,
`IPR2021-01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127
`
`a decision oninstitution is limited to an evaluation of the arguments and
`
`evidence presented in the Petition. It is not, as Patent Owner seemsto
`
`suggest, an appraisal of the challenged patent as against hypothetical future
`
`challenges.
`Weighing the burden on the Boardto issue eight additional institution
`decisions against the potential benefits of issuing those decisions, we
`
`exercise our discretion to allow Petitioner to withdraw the eight remaining
`
`Petitions. While we are sympathetic to Patent Owner’s desire to see these
`
`proceedings through, we find that Patent Owner does notsufficiently
`
`accountfor the additional work required of the Board to issue cight
`
`additionalinstitution decisions. Further, we note that permitting Petitioner
`
`to withdraw its remaining petitions would achieve the goal Patent Owner
`
`presumably hopedforinfiling its preliminary responses — non-institution.
`
`I. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDEREDthat Petitioner’s request to terminate IPR2021-01278,
`
`IPR2021-01285, IPR2021-01402, IPR2021-01403, IPR2021-01404,
`
`IPR2021-01405, IPR2022 00126, and IPR2022-00127 is granted.
`
`
`
`IPR2021-01278, IPR2021-01285, IPR2021-01402, IPR2021-01403,
`IPR2021-01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127
`
`FOR PETITIONER:
`
`Scott A. McKeown
`James L. Davis, Jr.
`Keyna Chow
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`james.|.davis@ropesgray.com
`keyna.chow@ropesgray.com
`
`FOR PATENT OWNER:
`
`Richard D. Coller III
`Jon E. Wright
`Richard M. Bemben
`Lestin L. Kenton
`Christian Camarce
`STEKNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rcoller-PTAB@sternekessler.com
`jwright-PTAB@sternekessler.com
`rbemben-PTAB@sternekessler.com
`lkenton-PTAB@sternekessler,com
`ccamarce-P'|AB@sternekessler.com
`
`
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