Serial IPR petitions directed to previously-challenged patents account for many of the petitions filed with the PTAB; however, 35 U.S.C. § 325(d) provides the Board with discretion to reject petitions where the same, or substantially the same, prior art or arguments have already been presented to the USPTO.  The Board recently designated as precedential part of its decision in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, Paper 19 (6 September 2017), addressing factors to be considered in determining whether to institute review for a serial, or “follow-on” petition.  Petitioner General Plastic filed a first set of petitions seeking IPR of U.S. Patent No. 9,046,820 B1 (“the ’820 patent”) and U.S. Patent No. 8,909,094 B2 (“the ’094 patent”).  Institution of a trial was denied for each petition based upon the merits.

Nine months after filing the first set of petitions, and after the petitions were denied, Petitioner filed follow-on petitions against the same patents. The Board again decided not to institute a trial for either patent, this time based on an exercise of the Board’s discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) rather than based on the merits of the new petitions.  Petitioner filed a request for rehearing, alleging 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 under either 35 U.S.C. § 311 or § 314.  In denying the request, the Board said that it considers the following seven factors in determining whether to institute a trial for a follow-on petition:

  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.

Although the Board concluded that the circumstances did not warrant institution, the Board did not create a per se rule with respect to follow-on petitions.  There are circumstances, according to the Board, where multiple petitions by the same petitioner against the same claims may be warranted. But the Board noted that 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 the Board’s decisions as a roadmap, until a ground is found that results in the grant of review.  General Plastic at 17.

Patent owners need to carefully evaluate these seven factors in formulating strategies to defend against serial petitions.  Likewise, petitioners should consider these factors in developing their petition strategies, such as considering whether filing parallel petitions may be a favorable approach, or considering how to demonstrate that a follow-on petition is appropriate.

Shortly after designating this decision precedential, the Board designated three related decisions as “informative” in denying institution.  In both Cultec, Inc. v. Stormtech LLC., Paper 7, No. IPR2017-00777 (22 August 2017) and Hospira, Inc. v. Genentech, Inc., Paper 16, No. IPR2017-00739 (27 July 2017), the Board denied review under 35 U.S.C. § 325(d) because they found the petitioners’ arguments to be the same or substantially the same as those considered by the Office during patent prosecution.  In Unified Patents, Inc. v. Berman, Paper 10, No. IPR2016-01571 (14 December 2016), the Board denied review because the petition relied on the same or substantially the same prior art previously considered by the Office and the petitioner failed to provide any compelling reason for the Board to readjudicate what already had been decided by the Office.

These decisions inform petitioners that recycled arguments and recycled art are not looked upon favorably by the Board and most likely will not be successful in a patent challenge.  By informing the public that these decisions are precedential and informative, the Board provides guidance to all parties that it will not waste its time on issues already decided.  In doing so, the Board is protecting the patent owner from having to face challenges they have already addressed.