PTAB Establishes Criteria Governing Follow-On Petitions for AIA Post Grant Proceedings

General Plastic Industrial Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017)

A familiar strategy in inter partes (“IPR”) review proceedings under the America Invents Act (“AIA”) is for petitioners to file multiple petitions challenging claims in an issued patent, including “follow-on” petitions filed after the initial petition for review. By using multiple petitions, a challenger may present unpatentability arguments and advance prior art that could not be adequately framed effectively in a single petition due to page limitations. Patent owners have criticized the practice of filing multiple related AIA petitions as harassment that increases the costs of defending a patent in post grant proceedings. In a recent precedential decision, the Patent Trial and Appeal Board (“PTAB”) denied institution of “follow-on” petitions and announced criteria that is likely to restrict the practice of filing multiple serial petitions in future cases.

Background

In September 2015, the petitioner, General Plastic Industrial Co. (“General Plastic”) filed two petitions for IPR review challenging claims in two patents owned by Canon Kabushiki Kaisha (“Canon”) relating to printer toner cartridges. Each petition alleged that claims in a Canon patent were unpatentable in light of the same prior art reference. The PTAB denied institution in March 2016 based in part upon the Board’s construction of the challenged claims. Subsequently, in July 2016, General Plastic filed five additional IPR petitions directed to the same claims in the Canon patents as the original petitions, but relying on new prior art references.

A three-judge PTAB panel denied institution of the follow-on petitions in November 2016, citing the Board’s exercise of discretion under 35 U.S.C. § 314(a), which states that, “The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.108(a) (“At any time prior to institution of inter partes review, the Board may deny some or all grounds for unpatentability for some or all of the challenged claims.”). General Plastic filed requests for rehearing in each of the petitions. At the initiation of the Chief Judge, an expanded PTAB panel decided the requests and issued a single opinion denying rehearing in all of the petitions.

Guidelines for “Follow-On” IPR Petitions

In denying the requests, the Board rejected General Plastic’s arguments that the decision not to institute on the follow-on petitions was inconsistent with the Patent Act and the Board’s practice in other cases. The Board reiterated seven nonexclusive factors relevant to its decision to initiate review of a second or subsequent petition for review of the  same patent:

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; and
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.

Slip op. at 16; See NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134 (PTAB May 4, 2016) (Paper 9) (listing a similar set of considerations).

Regarding General Plastic’s follow-on IPR petitions, the PTAB reiterated its decision not to institute review, concluding that six of the seven factors weighed against institution. Among other things, the expanded panel noted that:

• The follow-on petitions challenged the same claims as the initial petitions;
• General Plastics waited nine months to file the follow-on petitions;
• General Plastics filed the follow-on petition after the PTAB issued its decision denying the initial petitions;
• General Plastics did not explain why the references cited in the follow-on petitions could not have been found earlier through reasonable diligence;
• No “changed circumstances” existed that justified new prior art searches and or the follow-on petitions; and
• “[M]ultiple, staggered petition filings . . . are an inefficient use of the inter partes review process and the Board’s resources.”

The Board was critical of General Plastic’s strategy, which essentially sought a second bite at the apple in seeking review, using arguments formulated based on the patent owner’s response to the initial petition and the Board’s reasoning in denying institution on those petitions. In the initial decision denying institution, the panel noted that:

[The] Petitioner had modified its challenges in the follow-on petitions in an attempt to cure the deficiencies that the Board identified in its first-filed petitions. More specifically, the newly-asserted prior art . . . was a shift in Petitioner’s positions and arguments from the first-filed petitions based on the analysis articulated in our Decisions Denying Institution of those petitions. Moreover, the shift in Petitioner’s challenges was not the consequence of a position that Patent Owner surprisingly advanced or the Board surprisingly adopted[.]

Slip op, at 11. As a result, the Board concluded that “[t]he filing of sequential attacks against the same claims, with the opportunity to morph positions along the way, imposes inequities on [Patent Owner].” Id.

In the expanded panel’s decision denying General Plastic’s request for rehearing, the board announced that when exercising its discretion to institute, it will consider both the AIA’s goal of providing an “effective and efficient alternative” to federal court litigation, but also “the potential for abuse of the review process by repeated attacks on patents.” As a result, the Board will exercise its discretion to protect patent owners for harassment through serial petitions for review:

Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review. All other factors aside, this is unfair to patent owners and is an inefficient use of the inter partes review process and other postgrant review processes. Considering other factors (i.e., factors 2, 4, and 5) allows us to assess and weigh whether a petitioner should have or could have raised the new challenges earlier.

Slip op. at 21.

Practical Significance

The General Plastic decision continues the Board’s trend towards curbing petitioner tactics that it views as harassing to patent owners and a waste of PTAB resources. Although the decision notes that follow-on petitions for review may be justified in some circumstances, it disfavors the strategy of filing waves of petitions designed to leverage the results of earlier petitions. Petitioners should attempt to file multiple petitions challenging the same patent at the same time, or as soon as possible after the initial petition filing. Petitioners should also consider structuring the petitions to challenge different claims and minimize overlap. If a follow-on petition is filed significantly later than the initial petition, the petitioner should be prepared to demonstrate why newly cited prior art was not available earlier, and could not have been located through a diligent search. In addition petitioners should avoid “shifting” their unpatentability arguments in follow-on petitions unless a truly surprising development in the earlier proceeding justifies the shift.