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Patent Office Denies Staggered IPR Proceedings


By
Smith & Hopen PA

On September 6, 2017, the Patent Trial and Appeal Board (PTAB) issued an opinion denying the institution of subsequent sets of inter partes reviews (IPRs) filed after the denial of an initial set of IPRs. See General Plastic Industrial Co., Ltd. V. Canon Kubushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017). The subsequent IPRs involved the same patents and the same claims as the initial IPRs.

In the initial set of proceedings, General Plastic sought to invalidate U.S. Patent Nos. 9,046,820 and 8,909,094, based on an alleged prior art reference. The patents, owned by Canon, related to printer cartridges. The PTAB denied the initial IPR petitions, interpreting the claims of the Canon patents to differ from the teachings of the prior art reference.

After the PTAB denied the original IPR petitions, General Plastic filed additional IPR petitions against the same patents. Using the PTAB’s non-institution decisions as a roadmap, General Plastic provided new prior art seeking to cure the deficiencies on the basis of which the PTAB denied the original petitions. The PTAB denied the subsequent petitions under the NVIDIA rule without addressing their merits. General Plastics then requested a rehearing by an expanded panel, which was granted. As such, the PTAB sought to create a governing authority for subsequent IPR petitions through the rarely-utilized expanded panel.

The expanded panel noted that there is no per se rule against filing a subsequent challenge to a patent after the denial of an initial petition. Instead, the panel affirmed the 7-factor test enumerated in NVIDIA used to determine whether to institute the subsequent IPR. These factors include:

1) whether the same claims are at issue in both subsequent and initial proceedings;

2) whether the petitioner knew or should have known of the newly-asserted prior art at the time of the initial filing;

3) whether, at the time of the subsequent proceeding, the petitioner had received the patent owner’s preliminary response in the initial proceeding, or the PTAB’s decision on whether to institute a review in the initial IPR;

4) the length of time between the learning of the newly-asserted prior art and the filing of the subsequent proceeding;

5) whether the petitioner can adequately explain the length of time between the initial and subsequent filings;

6) the resources of the PTAB; and

7) whether, under 35 U.S.C. § 316(a)(11), a final determination can be issued within 1 year of the institution of review.

See NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134 (PTAB May 4, 2016). In affirming the NVIDIA factors, the panel raised the bar even higher for the filing of subsequent IPR petitions. For example, the second factor will almost always weigh in favor of the patent owner, because it will be difficult for a petition to explain why a prior art reference could not be found through a reasonably diligent search.

In affirming the NVIDIA rule, the panel explicitly considered the undue inequities and prejudices faced by patent owners in responding to IPRs. Recognizing that staggered IPRs can be used as a tactic to drag out challenges to a patent’s validity, the Board stated that:

Multiple, staggered petitions challenging the same patent and the 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.

Canon, pg. 17.

Under the NVIDIA analysis, it should be more difficult for a petitioner to institute staggered IPR petitions attacking the same patent, particularly after the denial of the initial petition. While the PTAB clearly stated that there is no per se rule against filing a subsequent IPR, the Canon opinion is good news for patent owners, who may now be able to avoid repeated attacks on the same patent. On the other hand, IPR petitioners must be more careful and thorough in drafting IPR petitions, because they likely will not be able to file subsequent petitions under different theories.




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