Trials@uspto.gov
`571-272-7822
`
`Paper 9
`-
`Date: March 31, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LUMENIS BE LTD.,!
`Petitioner,
`|
`
`Vv.
`
`BTL HEALTHCARE TECHNOLOGIESA.S.,
`Patent Owner.
`
`IPR2021-01278, IPR202 1-01285, IPR2021-01402, IPR2021-01403,
`IPR2021-01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127°
`
`Before BARBARA A. PARVIS, ZHENYU YANG, and DAVID COTTA,
`Administrative Patent Judges
`
`COTTA,Administrative Patent Judge.
`
`DECISION
`Dismissal Prior to Institution ofTrial
`35 118.C. $314
`
`' Further to Petitioner’s request, we have changedthe case captionto reflect
`that Lumenis Be Ltd., is the successor-in-interest of Lumenis Ltd. Paper4.
`* This Order addresses issues that are commonto each of these cases. We
`exercise our discretion to issue one Orderto be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`

`

`IPR2021-01278, IPR2021-01285, IPR2021-01402, IPR2021-01403,
`IPR2021-01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127
`
`In the period between August 5, 2021 and November10, 2021
`
`Lumenis Be Ltd. (“Petitioner”) filed a total of sixteen related petitions
`
`requesting inter partes review of eight different patents. We have issued
`
`decisions denying institution for eight of these petitions. See IPR2021-
`
`01273, Paper 8; IPR2021-01275, Paper 8; IPR2021-01276, Paper8;
`
`IPR2021-01279, Paper 8; IPR2021-01280, Paper 8; IPR2021-01282, Paper
`
`8; IPR2021-01283, Paper 8; IPR2021-01284, Paper 8. There are eight
`
`remaining petitions for which we havenotyet issued an institution decision.
`
`On March18, 2022, Petitioner emailed the Board requesting
`authorization to file a Motion to Withdraw IPR2021-01278, IPR2021-0 1285,
`
`IPR2021-01402, IPR2021-01403, IPR2021-01404, IPR2021-01405,
`IPR2022-00126, and IPR2022-00127. Ex. 3001.3 BTL Healthcare
`
`_ Technologies A.S. (“Patent Owner”) opposed the request. Jd. On March 22,
`
`2022, we held a teleconference to discuss Petitioner’s request and authorized
`
`eachparty brief the issue. Ex. 2024, 25:4-17.4 Pursuant to our
`
`authorization, Petitioner filed a Motion to Dismiss and Terminate the
`
`Proceeding (Paper 9, “Mot.”) and Patent Ownerfiled an Opposition to
`
`Petitioner’s Motion to Terminate (Paper 8, “Opp.”).
`
`The parties do not dispute that we have discretionary authority to
`
`terminate the eight remaining proceedings. Mot. 1 (“The Board has
`
`discretion to ‘grant, deny, or dismiss any
`g
`Y
`
`yp
`
`petition or motion.’”) (quoting 37
`q
`g
`
`3 Petitioner’s email also requested termination of IPR2021-01279 and
`IPR2021-01284. Ex. 3001. Shortly after receipt of Petitioner’s request, we
`issued decisions denying institution in those proceedings, rendering
`Petitioner’s request with respect to those cases moot.
`* For convenience, throughout this opinion, we cite to the papers and
`exhibits filed in IPR2021-01278. Similar papers werefiled in each of the
`other captioned proceedings.
`
`

`

`IPR2021-01278, IPR2021-01285, IPR2021-01402, IPR2021-01403,
`IPR2021-01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127
`
`C.F.R. § 42.71(a)); Ex. 2024, 13 (“Patent Owneris not disputing that the
`
`Board hasdiscretion to terminate if it so chooses.”). Rather, the parties
`
`dispute whether we should exercise our discretion to allow Petitioner to
`
`withdraw the eight remainingPetitions.
`
`Petitioner submits that the groundsset forth in the remaining petitions
`
`are “substantially identical’ to those in the eight petitions for which we
`
`denied institution. Mot. 2. According to Petitioner, if the Board were to
`
`issue decisions on the remainingpetitions, it would simply be “repeating
`37 66
`
`itself’ which would “serve no useful purpose for Patent Owner,”
`
`“provide
`
`no additional value to the public,” and “simply waste agency resources.” Id.
`
`Petitioner further argues that termination is appropriate because the
`
`proceedingis at a preliminary stage. Jd. at 1. Petitioner explainsthat at the
`
`timeit first raised the issue of termination to the board, the earliest statutory
`
`deadline for the remaining proceeding was “almost three weeks” away, and
`
`the latest was “morc than two months away.”Jd. at 3.
`
`Patent Ownerarguesthat “[t]aking Petitioner at its word, the Petition
`
`here ‘presents the same ultimate issues that have already been decidedin the
`
`earlier denied petitions.’” Opp. 1 (citing Ex. 2024, 5:3-7). Thus, according
`
`to Patent Owner,“[i]ssuing an institution decision would require modest
`
`additional effort.” Jd. Patent Owner emphasizes the “great expense”’it
`
`incurredin filing 16 preliminary responses andasserts that it “should obtain
`
`the benefit of its investment through public notice as to the merits of the
`
`petitions.” Jd. at 1,3. Patent Owner contendsthat Petitioner bears the
`
`burden to establish good cause and asserts that Petitioner has not metthis
`
`standard because:
`
`(1) pre-trial briefing is complete; (2) institution decisions are
`imminently due (between two weeks and two months); (3) the
`
`

`

`IPR2021-01278, IPR2021-01285, IPR2021-01402, IPR2021-01403,
`IPR2021-01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127
`
`Board has invested significant resources addressing the relevant
`validity issues (same primary references, commonissues,etc.);
`(4) the parties have not reached anysettlement agreement (see
`EX2025, 1-3); and (5) Petitioner continues to refuse to assure
`PO thatit will not attack the same patents again at the Office.
`Id. at 2.
`
`Webegin by considering how much workhas been donebythe panel
`and by the parties in each of the proceedings at issue. From theparties’
`
`standpoint, all eight cases are fully briefed and nothing more remainsto be
`
`donein orderfor us to issue an institution decision. From the Board’s
`
`perspective, the panel in each proceeding has not completed its review of the
`
`record in all of the remaining cases. Based on the parties’ representations
`
`that there is substantial overlap in issues, we expect that the work required to
`
`prepare institution decisions would be diminished as comparedto writing on
`a blank slate.° That said, the panel for each case would still have to prepare
`each casein its entirety. The Board has more than a modest amount of work.
`Having considered the burden on the Boardofissuing eight more
`
`institution decisions, we next consider the benefit of issuing institution
`
`decisions in the eight remaining cases. Asan initial matter, the parties have
`
`not identified the challenged patents as being involved in active district court
`
`litigation. Paper 2, 3; Paper 3, 1. Accordingly, issuing an opinion would not
`
`facilitate resolution of issues presented in district court.
`
`Patent Ownerarguesthat providing institution decisions would “help
`
`insulate [Patent Owner] from further attacks on its patents.” Opp. 1. Patent
`
`Owneracknowledges(id. at 3) that the Board has already issued precedent
`
`° Because we have not completed our review ofthe recordinall of the
`remaining cases, we have notverified the parties’ assertions that already-
`decided issues are dispositive with respectto the still-pending cases.
`
`4
`
`

`

`IPR2021-01278, IPR2021-01285, IPR2021-01402, IPR2021-01403,
`IPR2021-01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127
`
`specifically addressing Patent Owner’s concerns regarding future attacks on
`
`its patents from Petitioner. See General Plastic Industrial Co., v. Canon
`
`Kabushika Kaisha, IPR2016-01357, Paper 19, 16-17 (precedential)
`
`(recognizing “the potential for abuse of the review process by repeated
`
`attacks on patents” and articulating factors for panels to consider in
`
`determining whetherto institute on a patent that has previously been
`
`challenged, explaining “[o]ur intent in formulating the factors was to take
`
`undue inequities and prejudices to Patent Ownerinto account”). Patent
`
`Ownernonetheless argues that whether the Board previously issued an
`
`institution decision is an important factor in that analysis. Opp. 3. Petitioner
`
`disagrees, contending that “the Board already decided the Petitioner’s
`
`groundsin earlier, related proceedings” and “repeated issuance of a
`
`substantially same decision is a needlessly wasteful endeavor.” Mot. 1. At
`
`least with respect to future challenges from Petitioner, Patent Owner may
`
`rely on Petitioner’s statements. We find that issuing an opinion on the
`
`outstanding petitions would not place Patent Ownerin a materially better
`
`position underthe factors articulated in General Plastic than simply
`
`dismissing them.
`
`Asto third-parties, Patent Owner contends that issuing opinions on
`
`the remaining patents would provide “public notice” “thereby deterring
`
`future serial and meritless attacks.” Opp. 3. We do not dispute that an
`
`issued opinion would providenotice to the public. However, we are not
`
`persuaded that issuing an institution decision would provide substantially
`
`greater deterrent effect with respect to third-parties than a withdrawn
`
`petition, particularly when coupled with the already-issued eight related
`
`decisions denying institution on issues that the parties seem to agree are
`
`dispositive with respect to the remaining petitions.
`
`In addition, we note that
`
`

`

`IPR2021-01278, IPR2021-01285, IPR2021-01402, IPR2021-01403,
`IPR2021-01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127
`
`a decision oninstitution is limited to an evaluation of the arguments and
`
`evidence presented in the Petition. It is not, as Patent Owner seems to
`
`suggest, an appraisal of the challenged patent as against hypothetical future
`
`challenges.
`
`Weighing the burden on the Board to issue eight additional institution
`
`decisions against the potential benefits of issuing those decisions, we
`
`exercise our discretion to allow Petitioner to withdraw the eight remaining
`
`Petitions. While we are sympathetic to Patent Owner’s desire to see these
`
`proceedings through, we find that Patent Ownerdoesnot sufficiently
`
`account for the additional work required of the Board to issue eight
`
`additional institution decisions. Further, we note that permitting Petitioner
`
`to withdraw its remaining petitions would achieve the goal Patent Owner
`presumably hopedfor in filing its preliminary responses — non-institution.
`
`I. ORDER
`
`In consideration of the foregoing,it is hereby:
`
`ORDEREDthat Petitioner’s request to terminate IPR2021-01278,
`
`TPR2021-01285, IPR2021-01402, IPR2021-01403, IPR2021-01404,
`
`IPR2021-01405, IPR2022-00126, and IPR2022-00127 is granted.
`
`

`

`IPR2021-01278, IPR2021-01285, IPR2021-01402, IPR2021-01403,
`IPR2021-01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127
`
`FOR PETITIONER:
`
`Scott A. McKeown
`James L. Davis,Jr.
`Keyna Chow
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`james.|.davis@ropesgray.com
`kcyna.chow@ropesgray.com
`
`FOR PATENT OWNER:
`
`Richard D. CollerIII
`Jon E, Wright
`Richard M. Bemben
`Lestin L. Kenton
`Christian Camarce
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rcoller-PTAB@sternekessler.com
`jwright-PTAB@sternekessler.com
`rbemben-PTAB@sternekessler.com
`lkenton-PTAB@sternekessler.com
`ccamarce-PTAB@sternekessler.com
`
`

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.

We are unable to display this document.

PTO Denying Access

Refresh this Document
Go to the Docket