When a particular patent is involved in an inter partes review (IPR) proceeding or other post-grant review proceeding, the USPTO has wide discretion in determining whether to allow an additional proceeding to be instituted or continued. The two governing statutes are 35 U.S.C. §315(d) and 35 U.S.C. §325(d), each of which states that “the Director may determine the manner in which the . . . matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter.”

In many instances, the Patent Trial and Appeal Board (PTAB) denies institution of a subsequent IPR. In this regard, even when “a petitioner establishes a reasonable likelihood of prevailing with respect to at least one challenged claim,” the PTAB may decide against instituting the subsequent proceeding. Conopco v. Procter & Gamble, IPR 2014-00506, Paper No. 25 at page 4 (Decision Denying Request for Rehearing). Even if a subsequent proceeding regarding a particular patent is requested by a different petitioner, the PTAB has discretion to deny institution for “efficient administration.” See Unified Patents v. PersonalWeb Technologies, IPR 2014-00702, Paper No. 13.

Further, the PTAB often uses its discretion to deny institution of a subsequent proceeding when a subsequent IPR filed by the same petitioner only corrects substantive defects that existed in a previous IPR. See Unilever v. Procter & Gamble, IPR 2014-00506, Paper No. 17 at page 8. In Nvidia v. Samsung, IPR 2016-00134, Paper No. 9, the PTAB considered a list of factors in determining whether to institute a subsequent proceeding. See Nvidia v. Samsung, IPR 2016-00134, Paper No. 9 at page 7. The factors include:

  1. the finite resources of the Board;
  2. 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;
  3. whether the same petitioner already previously filed a petition directed to the same claims of the same patent;
  4. 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 about it;
  5. whether at the time of filing of the second petition the petitioner already received patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition;
  6. the length of time that elapsed between the time petitioner learned of the prior art asserted in the second petition and filing of the second petition; and
  7. whether petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent.

PTAB used its discretion to deny institution of the subsequent proceeding IPR where the subsequent IPR petition was filed about two months after the patent owner’s preliminary response (Paper No. 9 at page 9) and the petitioner was found to be aware of a newly asserted prior art reference “when the first petition was filed . . . and subsequently waited too long to file the second petition . . . with no apparent justification. ” (Paper No. 9 at page 12).

The PTAB has used its discretion to grant institution of a subsequent IPR petition in some instances. In Silicon Laboratories v. Cresta Technology, IPR 2015-00615, Paper No. 9, a request to institute a subsequent IPR was granted where grounds against new claims were asserted and additional grounds were also asserted, and the PTAB explained that “despite certain commonality with the earlier challenges, they do not rely on the reasoning we rejected in the related proceeding.” In Arista v. Cisco, IPR 2016-00309, Paper No. 8, the PTAB stated that “we have not previously addressed substantively a challenge to the independent claims based on obviousness over Amara” in its decision to grant a third IPR petition was granted after two previous IPRs had been dismissed.

The PTAB often uses discretion to deny subsequent IPRs, especially when requested by the same petitioner. Therefore, if there is need to file a subsequent IPR due to a procedural problem with the previous IPR or a change in circumstances, for example, a claim later asserted by the patent owner, a convincing explanation may be critical, especially where the subsequent IPR is based on new grounds and/or newly cited prior art. Of course, the best practice is to file all grounds at the time of the filing of the first IPR whenever possible.