IP Law Daily, PATENT—USPTO Director vacates PTAB decision and grants IPR for lighting patent, (Apr 23, 2024)

By Brian Craig, J.D.

The two companies that requested review do not have a significant relationship.

The USPTO Director has vacated a decision by the Patent Trial and Appeal Board denying inter partes review for a patent owned by Rotolight Limited relating to a method for controlling a lighting device. The USPTO Director concluded that the Board improperly expanded the discretionary principles in denying review. The Director found that the petitioner Videndum Production Solutions that challenged the validity of the patent does not have a significant relationship with another company that previously requested review (Videndum Production Solutions, Inc. v. Rotolight Ltd., April 19, 2024).

Rotolight owns U.S. Patent No. 10,845,044 B2 (the ’044 patent) entitled “Lighting system and control thereof” relating to a method for controlling a lighting device. Videndum Production Solutions, Inc. (“Videndum”) filed a petition requesting inter partes review (IPR) of the ’044 patent. Videndum is not the first company to challenge the validity of the ’044 patent. Arnold & Richter Cine Technik GmbH & Co. Betriebs KG (“ARRI”) previously filed a petition for IPR of the’044 patent. The Board instituted the IPR, but ARRI and Rotolight settled. On January 25, 2024, a majority of the Board denied Videndum’s petition while a dissent argued that the Board should not have denied the request for review. Videndum requested review by the USPTO Director of the Board’s decision, arguing that the Board abused its discretion in denying review.

Significant relationship. The USPTO Director concluded that the Board improperly expanded the discretionary principles in denying review of the ’044 patent. In certain circumstances, the Board will discretionarily deny a petition because another petition challenging the same patent was filed previously. The USPTO Director followed the principles set forth in General Plastic Industries Co., Ltd. v. Canon Kabushiki Kaisha. In General Plastic, the Board considers non-exclusive factors that are relevant to the discretionary determination in denying IPR. One of the factors is whether the same petitioner previously filed a petition directed to the same claims of the same patent.

Here, the USPTO Director concluded that the first factor—whether the same petitioner previously filed a petition directed to the same claims of the same patent—does not outweigh the other factors. General Plastic addressed the situation where an earlier petition is filed by the same petitioner. General Plastic has not been extended to any cases in which the first and second petitioners do not have a significant relationship. In other cases, discretionary denial was not justified when a significant relationship vis-à­-vis the challenged patent was not present. In this case, the record establishes that Videndum and ARRI do not have a significant relationship. The USPTO Director found the majority’s decision improperly expanded the discretionary principles set forth in General Plastic to apply to petitioners that are not the same and do not have a significant relationship.

Thus, the USPTO Director vacated the Board’s decision and ordered that the IPR proceed.

The Case is No. 571-272-7822.

Attorneys: David Magee (Armstrong Teasdale LLP) for Videndum Production Solutions, Inc. Bradley Liddle (Carter Arnett PLLC) for Rotolight Ltd.

Companies: Videndum Production Solutions, Inc.; Rotolight Ltd.

Cases: Patent USPTO GCNNews