Code200, UAB v. Bright Data, Ltd

When a first-filed petition by the same petitioner was discretionarily denied or otherwise not evaluated on the merits, the Board may not treat General Plastic factor 1 as weighing strongly toward denial of a second-filed petition because the petitioner offered no Sand Revolution II stipulation. Factors 1-3 are read together and weigh in favor of discretionary denial under 35 U.S.C. § 314(a) only where there are "road-mapping" concerns under factor 3 or other concerns under factor 2. Absent those concerns, and with factors 2, 4, 5 and 7 of limited relevance and factor 6 outweighed by the mission to improve patent quality, the Board should reach the merits. The Director clarifies the application of Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i), and disagrees with the panel's view that the lack of a Sand Revolution II stipulation outweighed the absence of a merits review. She follows Intel Corp. v. VLSI Tech. LLC, IPR2022-00366, Paper 14 (June 8, 2022). A petitioner whose earlier petition was denied on discretionary grounds, such as under Fintiv, can refile and obtain a merits decision on institution without offering a stipulation, if it shows no road-mapping or fairness concerns. A patent owner cannot rely on the petitioner's earlier discretionary denial or on the missing stipulation to defeat a second petition, and must instead show road-mapping or factor 2 concerns. The Board relied on Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 272 (2016), for the congressional purpose of improving patent quality and restoring confidence in the presumption of validity. LEGAL TEST OR STANDARD: General Plastic non-exclusive factors: 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. Factor 1 must be read with factors 2 and 3. Where the first petition was not evaluated on the merits, factors 1-3 favor denial only with road-mapping concerns under factor 3 or other concerns under factor 2. TRIGGERING FACTS: The same petitioner had earlier petitions (IPR2020-01266 and IPR2020-01358) denied under Fintiv without merits evaluation. It then filed second petitions with substantially overlapping challenges that were not refined based on lessons learned from later developments. The Board found no evidence of road-mapping, factors 2, 4 and 5 had limited relevance, and the petitioner did not offer a Sand Revolution II stipulation. The panel had denied institution and joinder under § 314(a). KEY QUOTE: "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." (Paper 18, p. 5) PRIOR PRECEDENT AFFECTED: Clarifies and applies Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i). Follows Intel Corp. v. VLSI Tech. LLC, IPR2022-00366, Paper 14 (June 8, 2022). Refers to Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020) (precedential), as the basis of the earlier denials, and to Sand Revolution II, which the decision does not give a full citation for. PRACTICE TIP: If your earlier petition was denied on discretionary grounds, say so in the second petition. Argue that the merits were never reached, that there is no road-mapping, that your arguments were not refined from the Board's decisions, and that factors 2, 4 and 5 raise no fairness concerns. As patent owner, do not rely on the missing stipulation. Develop concrete road-mapping evidence or factor 2 concerns.