An expanded panel of the PTAB recently provided additional guidance on when it may exercise its discretion not to institute proceedings. Petitioner General Plastic Industrial Co., Ltd. originally challenged two patents in IPR petitions for which trial was denied based on the merits and then, nine months after the initial filing, filed five follow-on petitions challenging the same two patents. The Board exercised its discretion not to institute the follow-on petitions under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a). See IPR2016-01357, Paper 19 at 3.
General Plastic requested rehearing, arguing that the PTAB acted contrary to the legislative purpose of 35 U.S.C. § 314(a), misapplied the NVIDIA analysis, and had created an “improper de facto bar against all follow-on petitions.” IPR2016-01357, Paper 19 at 12. General Plastic also contended that 35 U.S.C. § 325(d) expressly recognizes the possibility of subsequent petitions and only allows the Board to reject a follow-on petition when the same or substantially the same prior art or arguments were presented in the first petition. Id. The PTAB Chief Judge determined that an expanded panel was warranted “due to the exceptional nature of the issues presented.” Id. at 4-5. The expanded panel, which included the Chief and Deputy Chief Judges, rejected General Plastic’s arguments, stating that “[t]here is no per se rule precluding the filing of follow-on petitions” and noting that the non-exhaustive NVIDIA factors “inform practitioners and the public of the Board’s considerations in evaluating follow-on petitions.” Id. at 15-16.
This decision is instructive for at least a couple of reasons. First, the expanded panel noted “[m]ultiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.” Id. at 17. Thus, petitioners should continue to use their best arguments in the first petition. Second, the panel observed that General Plastic failed to explain “why a reasonably diligent search could not have uncovered the newly applied prior art” or whether “there were any changed circumstances that reasonably justified its new prior art searches and associated filing of follow-on petitions.” Id. at 20. Thus, if a follow-on petition is filed, petitioners should directly address these considerations to reduce the risk of non-institution under § 314(a).