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PTAB Tracker

September 29, 2021

Gen. Plastic Indus., Co. v. Cannon Kabushiki Kaisha, Case IPR2016-01357, Paper 19

General Plastic filed a first set of IPR petitions challenging two patents which were each denied on the merits.  Nine months after the filing of the first set of petitions, General Plastic filed follow-on petitions against the same patents.  Institution was denied for each of these follow-on petitions based on the Board’s discretion under 35 U.S.C. § 314(a).

General Plastic subsequently filed petitions for rehearing of IPR in five related proceedings. (See Paper 19 at 2.) In each request, General Plastics contended that the corresponding decision should be withdrawn, that IPR should be instituted, and that the panel on rehearing should be expanded. (See id.) General Plastics first argued that trials should have been instituted on the follow-on petitions because a petitioner is not limited to filing just one petition per challenged patent. (See id. at 3.) General Plastics then argued that the PTAB should not have relied on § 314(a) and that the PTAB should have performed its analysis under 35 U.S. C. § 325(d). (See id.) Then, General Plastics argued that the PTAB misapplied the factors set forth in NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134 (PTAB May 4, 2016) (Paper 9). (See id.) Specifically, General Plastics contends that: (1) the factor of the limited one-year time period for issuing a final written decision should be afforded additional, if not dispositive, weight in light of the legislative history; (2) the PTAB abused its discretion by requiring that the prior art “should have been known” at the time the initial petitions were filed; and (3) the PTAB erred in considering potential prejudice to the patent owner because the NVIDIA decision does not list such a factor. (See id.)

 

The Board subsequently issued a decision granting General Plastic’s request for an expanded panel and denying General Plastic’s requests for rehearing. (See id. at 22). The PTAB determined the seven NVIDIA factors are appropriate for analyzing follow-on petitions under § 314(a):

(1) whether the same petitioner previously filed a petition directed to the same claims of the same patent;

(2) 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;

(3) 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;

(4) 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;

(5) 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;

(6) the finite resources of the Board;

(7) 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. (See id. at 16).

The PTAB found that six of the seven factors weighed against institution and that its resources would be more appropriately expended on initial petitions rather than follow-on petitions. (See id. at 19).

Takeaways

  1. Petitioners should make every effort to put their best case in initially filed petitions as the Board has made clear that follow-on petitions are likely to be denied under the Board’s discretion.
  2. A petitioner bringing a follow-on petition should consider and address the 7 NVIDIA factors with an emphasis on special circumstances that would warrant a follow-on petition.

Author

Caitlin Dean | Associate | New York

Caitlin Dean is a litigation attorney in the New York office of Fish & Richardson P.C. Caitlin’s practice focuses on patent and trade secret litigation in U.S. district courts spanning a diverse array of industries, including computer software, energy, and pharmaceuticals.... Read More