Today the PTAB designated part of its decision in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) as precedential. In Section II.B.4.i of the decision—the only portion designated precedential—the Board addressed the issue of serial IPR petitions challenging the same patents.
The petitioner filed a set of follow-on IPR petitions after the Board denied institution of a set of petitions challenging the same patents. The Board also denied institution of the follow-on petitions after considering the following seven factors it stated would prevent inequities to the patent owner and would ensure efficiency of the IPR process:
- 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.
While the Board denied institution, it did not create a per se rule against follow-on petitions. Instead, the Board stated that “there may be circumstances where multiple petitions by the same petitioner against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case.” (Paper 19 at 18.)
Chief Judge Ruschke had previously designated this opinion “informative” under the Board’s Standard Operating Procedure 2.