Savant Techs. LLC d/b/a GE Lighting v. Feit Electric Co., Inc.

Informative decision only: persuasive authority, not binding precedent. When a patent owner asserts additional claims in district court after the petitioner filed its first IPR, and the petitioner diligently files a second petition on those newly asserted claims, the Director may decline to discretionarily deny institution under the General Plastic "potential for abuse of the review process by repeated attacks on patents" concern, even though the petitioner knew the prior art and the challenges to independent claim 1 are substantially the same. The Director found it significant that the district court case against the petitioner was stayed, and directed that, absent extraordinary circumstances, the Board consolidate the new proceeding with the first IPR. No prior precedent directly addressed this issue in the text; the decision applies Gen. Plastic Indus. Co. v. Cannon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i) to a follow-on petition prompted by newly asserted claims. Petitioners who must challenge claims asserted after their first IPR can file a second petition without it being treated as abusive serial challenge, if they show the new assertion necessitated it, they acted diligently (here, under three months), and the district court case is stayed. Patent owners who add claims in litigation after an IPR is filed should expect that tactic to support a second petition, and should expect consolidation with the first IPR. The decision cites no Federal Circuit, CCPA or Supreme Court authority. LEGAL TEST OR STANDARD: The Director asked whether the facts show the petition raises concerns of the "potential for abuse of the review process by repeated attacks on patents" under Gen. Plastic Indus. Co. v. Cannon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 17 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i). The determination rests on the totality of the evidence and arguments and a holistic assessment. The decision does not list numbered factors. TRIGGERING FACTS: Patent Owner sued Savant, Elong and LEDVANCE on the '678 patent. Savant and LEDVANCE filed IPR2024-01357 on August 26, 2024 against claims 1-3, 6, 7, 9, 10, 16 and others. On September 20, 2024 Patent Owner additionally asserted claims 11 and 12 against Savant. Petitioners filed this Petition on December 9, 2024 against claims 11-14, less than three months after the new assertion. The first IPR was instituted March 5, 2025, and the district court cases of Savant and LEDVANCE were stayed. Petitioners knew the prior art earlier and the challenges to claim 1 were substantially the same. KEY QUOTE: "Petitioners acted diligently in filing this Petition less than three months after Patent Owner asserted claims 11 and 12 in district court." (Paper 16, p. 3) PRIOR PRECEDENT AFFECTED: Gen. Plastic Indus. Co. v. Cannon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 17 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i) is applied; the Director found its concern about abuse by repeated attacks not demonstrated. No other prior decision is named. PRACTICE TIP: If a patent owner asserts additional claims after your first IPR, file the follow-on petition promptly, within months, and in your opposition to any discretionary denial request, document that the new assertion necessitated the petition, show diligence, and point to any stay of the district court case, and expect consolidation with the first IPR.