Tesla, Inc. v. Bulletproof Property Management, LLC

Informative decision only: persuasive authority, not binding precedent. Under NHK-Fintiv, when the parallel district-court trial date has been vacated and petitioner gives a broad stipulation not to advance any ground that reasonably could have been raised in IPR or system-art combinations with IPR references, discretionary denial is disfavored because the IPR can function as an alternative to litigation. For § 325(d)-type prior-art arguments, discretionary denial is disfavored where the petition relies on non-presented art and persuasively shows the examiner overlooked material teachings in cited art, particularly where the challenged patents are newly issued, petitioner filed within two years, and petitioner provides persuasive U.S.-manufacturing evidence under the March 11, 2026 Memorandum. This clarifies Apple Inc. v. Fintiv, Inc. and applies Magnolia Med. Tech., Inc. v. Kurin by treating the absence of any scheduled trial date plus a broad Sotera-plus/system-art stipulation as strongly reducing duplication and inconsistent-outcome concerns; no prior precedent directly addressed the combined weight of those facts with the March 11, 2026 U.S.-manufacturing discretionary-considerations memorandum. For petitioners, this makes institution more likely if they document a vacated or unscheduled trial date, file a broad litigation stipulation, identify non-cumulative/non-presented art or examiner error, rebut settled-expectations arguments with recent issuance and prompt filing, and submit evidence of U.S. manufacturing. For patent owners, bare assertions of parallel-litigation overlap, IDS citation of a reference, alleged delay within two years of issuance, or unsupported foreign-component content will not carry discretionary denial; they need evidence of a real trial date, inadequate stipulation, material prior Office consideration, strong settled expectations, and evidence rebutting U.S. manufacturing. The Director relied on PTAB/Director authority and USPTO guidance only, including Fintiv, Magnolia, and the March 11, 2026 Memorandum, and cited no Federal Circuit or Supreme Court authority. LEGAL TEST OR STANDARD: The Director applied the following discretionary-denial considerations as stated in the decision: "co-pending parallel district court litigation" under Apple Inc. v. Fintiv, Inc.; whether "the originally scheduled trial date in the district court litigation 'has recently been vacated, leaving no currently scheduled trial'"; whether petitioner stipulated that it "will not advance in the parallel litigation any ground that reasonably could have been raised in an inter partes review ('IPR') and any other ground based on a combination of system art with any prior art reference asserted as the basis of a ground in each IPR"; whether art "was previously presented to the Office" and whether "the Office erred in a manner material to the patentability of the claims"; whether patent owner has "settled expectations" based on prior knowledge and delay; and "Additional Discretionary Institution Considerations – U.S. Manufacturing and Small Business Use of AIA Proceedings." TRIGGERING FACTS: Parallel district-court trial was vacated with no currently scheduled trial; Tesla gave a broad stipulation covering reasonably-could-have-raised IPR grounds and combinations of system art with any IPR reference; Joos was cited in IDSs for child applications but not applied, was not presented in the parent patent’s prosecution, and allegedly disclosed the examiner’s stated reasons for allowance; the petitions also relied on Bettger and Bayer, which were not previously presented; all challenged patents issued in 2024–2025 and petitions were filed within two years of issuance; Tesla submitted evidence that it manufactures the accused products in the United States, while patent owner’s 30%–40% foreign-component allegation was unsupported. KEY QUOTE: 'Based on these arguments and evidence alone, discretionary denial is not appropriate in these proceedings.' (Paper 14, p. 4). PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected; the decision applies Apple Inc. v. Fintiv, Inc., IPR2020-00019, and Magnolia Med. Tech., Inc. v. Kurin, IPR2026-00097. PRACTICE TIP: Petitioners opposing discretionary denial should package four evidentiary points together—no scheduled trial date, a broad Sotera-plus/system-art stipulation, specific examiner-error/non-presented-art showings, and supported U.S.-manufacturing evidence—while patent owners should not rely on IDS citation or unsupported manufacturing allegations without proof.