LifeVac LLC v. DCSTAR Inc.

When a petitioner files an IPR after its earlier petition for post-grant review (PGR) on the same patent was not instituted, so that no final written decision issued, the Director will generally not discretionarily deny institution of the IPR because of that earlier PGR petition. The Director reasoned that PGR petitions are favored because they must be filed "no later than nine months from the grant of the patent (35 U.S.C. § 321(c))," are close in time to examination, and occur before expectations in the patent rights are strongly settled. The decision does not overrule General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisa, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential), which the patent owner cited. It distinguishes General Plastic because the earlier PGR challenge did not result in a final written decision. A petitioner whose PGR was denied institution, even on the merits, can generally still bring an IPR on the same patent without a serial-petition denial, and the Board will take up institution on the merits. A patent owner cannot rely on the earlier denied PGR alone. It must show more, such as the same or substantially the same prior art or arguments under 35 U.S.C. § 325(d), and the Director found that argument unpersuasive here. The decision cites no Federal Circuit or Supreme Court authority. LEGAL TEST OR STANDARD: The Director decided on the totality of the evidence and arguments, in view of all relevant considerations, in a holistic assessment. On the earlier-PGR point, the Director stated that petitions for inter partes review will generally not be discretionarily denied because of an earlier petition for post-grant review when the post-grant review was not instituted. The Director also considered 35 U.S.C. § 325(d), asking whether the petitioner was advancing the same or substantially the same prior art or arguments as in the earlier PGR. The text sets out no numbered factors. TRIGGERING FACTS: The petitioner had earlier challenged the same patent (the 575 patent) in PGR2023-00032. That petition was denied institution on the merits (Paper 11 in that case), and the earlier challenge did not result in a final written decision. The patent owner then sought discretionary denial of the later IPR under General Plastic and § 325(d). A future party would need to show a different history, or the same or substantially the same prior art or arguments, to avoid this outcome. KEY QUOTE: "As such, petitions for inter partes review will generally not be discretionarily denied because of an earlier petition for post-grant review when the post-grant review was not instituted." (Paper 11, p. 2) PRIOR PRECEDENT AFFECTED: General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisa, IPR2016-01357, Paper 19, at 17-18 (PTAB Sept. 6, 2017) (precedential), is cited by the patent owner and effectively distinguished, because the earlier challenge here did not result in a final written decision. No other prior precedential or informative decision is named. PRACTICE TIP: A patent owner seeking discretionary denial based on a petitioner's earlier non-instituted PGR should not rely on General Plastic or the earlier denial alone. It should develop a concrete § 325(d) showing that the same or substantially the same prior art or arguments are being advanced. A petitioner should stress that the earlier PGR was not instituted and produced no final written decision.