Follow-on IPR petitions by the same entity challenging the same claims have been at issue in multiple cases before the Patent Trial and Appeal Board. Although there is no per se rule barring follow-on petitions, the Board has used its discretion under 35 U.S.C. § 314(a) in certain cases to deny institution of petitions based on an overarching concern over the potential to abuse the review process with repeated attacks on patents. Follow-on IPR petitions by the same entity challenging the same claims have been at issue in multiple cases before the Patent Trial and Appeal Board. Although there is no per se rule barring follow-on petitions, the Board has used its discretion under 35 U.S.C. § 314(a) in certain cases to deny institution of petitions based on an overarching concern over the potential to abuse the review process with repeated attacks on patents.1
The Board has considered a number of different factors in determining whether to exercise its discretion to deny a follow-on petition. Until recently, the Board had not issued any precedential or informative opinions that might provide guidance to and consistency between panels. The Board, however, recently issued a precedential opinion in General Plastic Industrial Co. v. Canon Kaubushiki Kaisha that provides a non-exhaustive, seven-factor test to address follow-on petitions.2, 3
This post discusses the General Plastic decision, explores post-General Plastic decisions addressing the Board's discretion under § 314(a), and provides practical considerations following General Plastic.
The General Plastic Decision
In General Plastic, the petitioner filed two petitions covering two different patents in September 2015.4 Each petition was denied on the merits in March 2016.5 The petitioner filed five follow-on petitions in July 2016-;nine months after filing its first petitions.6 The Board used its discretion under § 314(a) and denied institution of each of those petitions.7 The petitioner then requested rehearing and an expanded panel.8 The Chief Judge expanded the panel, which denied the request for rehearing and issued the opinion that is now designated as precedential.9
In denying the request for rehearing, the expanded panel affirmed usage of the seven-factor test enumerated in Nvidia, stating that "[s]uch a non-exhaustive list of factors informs practitioners and the public of the Board's considerations in evaluating follow-on petitions."10 Those factors are as follows:
- whether the same petitioner previously filed a petition directed to the same claims of the same patent;
- whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it;
- whether at the time of filing of the second petition the petitioner already received the patent owner's preliminary response to the first petition or received the Board's decision on whether to institute review in the first petition;
- the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition;
- whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent;
- the finite resources of the Board; and
- the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.11
The Board, however, did not close the door on all follow-on petitions. To the contrary, the Board noted that there is no per se rule banning such petitions,16 and that "there may be circumstances where multiple petitions by the same petitioner against the same claims of a patent should be permitted.";17
Applying the factors above to the follow-on petitions in General Plastic, the expanded panel found six of the seven factors weighed against institution.18 Factor 1 weighed against institution, because the follow-on petitions challenged the same claims of the same patents as the first-filed petitions.19 The second and third factors weighed against institution, because the follow-on petitions were filed nine months after the first-filed petitions and the petitioner had the benefit of the patent owner's preliminary response and the Board's institution decision.20 Factor 4 weighed against institution, because petitioner waited until the Board denied institution of the first-filed petitions to commence new prior art searches.21 Factor 5 weighed against institution, because the petitioner provided no explanation of its nine-month delay in filing petitions.22 Factor 6 weighed against institution, because "the Board's resources would be more fairly expended on initial petitions, rather than follow-on petitions."23 The Board also noted its concern over petitioner's shift in positions between the first-filed and follow-on petitions as petitioner's shift was not the "consequence of a position that Patent Owner surprisingly advanced or the Board surprisingly adopted."24
Post-General Plastic Decisions
The Board has issued two institution decisions since General Plastic-one denying institution in Alere and one granting institution in Silver State.25 Each of those decisions is discussed below.
In Alere, the petitioner filed a first petition seeking review of Claims 1-6 and 9-15.26 The Board instituted review of Claims 1-5, 9, and 11-15, but denied institution of Claims 6 and 10.27 Approximately a month and a half after the Board issued its institution decision denying review of the first petition, the petitioner filed a second petition seeking review of Claims 6 and 10.28 The petitioner challenged those claims using two of the same references asserted in the first petition and two additional references.29 The Board used its discretion and denied institution of the second petition under § 314(a).30
Applying the General Plastic factors, the Board found that each of the factors weighed against institution.31 The Board found that the first factor weighed against institution, because the petitioner had previously challenged Claims 6 and 10 in the first-filed petition.32 The second and fourth factors weighed against institution, because the petitioner knew about two of the references since those references were asserted in the first-filed petition and should have known about the two other references since they were at least 14 years old.33The third factor weighed against institution, because the petitioner had the benefit of seeing the patent owner's preliminary response and the Board's institution decision at the time of filing the second petition.34 As to the fifth factor, the Board faulted the petitioner for not providing an explanation for the elapsed time between the filing of the first and second petitions.35 Notably, the Board stated that "where a second petition is filed after the preliminary response and institution decision have issued in an earlier inter partes review proceeding, a petition should explain why the second review proceeding is appropriate."36 The sixth and seventh factors weighed against institution, because "multiple, staggered petition filings" is generally "an inefficient use of . . . the Board's resources."37
In Silver State, the patent owner argued the Board should deny institution of Unified Patents' petition under § 314(a) where Google had previously filed a petition on the same patent Unified Patents was challenging.38 The patent owner contended that institution would be a "colossal waste of the Board's and Patent Owner's resources" because there was no underlying enforcement action against Unified Patents.39 The Board instituted trial and declined to use its discretion under § 314(a).40
After noting that Silver State failed to apply the General Plastic factors, the Board itself applied the first and third factors and found that they did not weigh against institution.41 The first factor did not weigh against institution, because Unified Patents had not previously challenged the patent.42 The third factor did not weigh against institution, because Google's IPR was terminated before a preliminary response was filed such that Unified Patents did not have the benefit of a preliminary response before filing its petition.43
There are practical considerations that emerge from the Board's precedential General Plastic decision for both petitioners and patent owners.
Petitioners who file a second petition should generally consider explaining why a second proceeding is appropriate based on the General Plastic factors. Petitioners should also consider pointing to "changed circumstances" after the filing of the first petition.44 For example, the petitioner might consider asserting that the patent owner or the Board may "surprising" arguments.45 Petitioners who file a second petition after receiving a preliminary response in a first proceeding should consider explaining why a second review would be appropriate.46
Patent owners should consider pointing out if the petitioner fails to address any of the seven General Plastic factors. Patent owners should also consider pointing out the length of time between the filing of staggered petitions, particularly noting if the petitioner had the benefit of a preliminary response or institution decision in the first proceeding at the time the second petition is filed.
1 "The Director may not authorize an inter partes review to be instituted unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." 35 U.S.C. § 314(a) (emphasis added).
2 General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR 2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017).
3 The Board designated General Plastic as informative on September 18, 2017, and precedential on October 18, 2017. An informative decision is not binding authority on Board members, whereas a precedential decision is binding authority. PTAB's Designation for Opinions, available at https://www.uspto.gov/sites/default/files/documents/ptab%20Designations%20for%20Opinions%201-12-2016.pdf.
4 General Plastic, Paper 19 at 6.
6 Id. at 7.
7 Id. at 2-3.
8 The Board's "governing statutes and regulations do not permit parties to request, or panels to authorize, an expanded panel." General Plastic, Paper 19 at 4. The Chief Judge, however, has discretion to expand a panel upon a "suggestion" from a judge, panel, or party. Id. In this case, the Chief Judge decided panel expansion was warranted "due to the exceptional nature of the issues presented." Id. at 4-5.
9 Id. at 3.
10 Id. at 16.
12 Id. at 17.
13 Id. at 18.
14 Id. at 17.
16 Id. at 15.
17 Id. at 18.
18 Id. at 19.
19 Id. at 10.
21 Id. at 10-11.
23 Id. at 10.
24 Id. at 11.
25 Alere Inc. v. Rembrandt Diagnostics, LP, Case IPR2017-01130, Paper 10 (P.T.A.B. Sept. 28, 2017); Unified Patents Inc. v. Silver State Intellectual Techs., Inc., Case IPR2017-01198, Paper 6 (P.T.A.B. September 28, 2017).
26 Alere, Paper 10 at 6.
27 Id. at 6-7.
28 Id. at 9.
29 Id. at 8 ("It is evident that Petitioner knew of MacKay and Lee-Own before the first Petition was filed, as these references were expressly relied upon in the first Petition.").
30 Id. at 10.
31 Id. at 10, 19.
32 Id. at 8.
33 Id. at 8-9.
34 Id. at 9.
35 Id. at 9-10.
36 Id. at 10.
38 Silver State, Paper 6 at 19.
40 Id. at 20-21.
41 Id. at 20.
44 See General Plastic, Paper 19 at 20.
45 Id. at 20-21.
46 Alere, Paper 10 at 9.
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