1. Insights
  2. Blogs
  3. IP Newsflash

PTAB Wants an Explanation for Your Follow-On Petitions

Sep 25, 2017

Reading Time : 2 min

By: Rubén H. Muñoz

The PTAB considers seven factors under 35 U.S.C. § 314(a), as outlined in its 2016 Nvidia decision, in determining whether to allow follow-on petitions, including:

  • Whether, at the time of the filing of the original petition, the petitioner knew or should have known of the prior art asserted in the second petition
  • Whether, at the time of the filing of the second petition, the petitioner already received the patent owner’s preliminary response to the first petition or received the PTAB’s decision on whether to institute review in the first petition
  • whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions.

These factors center on the issue that a petitioner can benefit from receiving and having the opportunity to study the patent owner’s response and the prior decision denying institution to use as a roadmap to find an argument that results in a grant of review.

The PTAB appears to have seized on the following fact: the petitioner waited until after the PTAB had denied institution of the original petitions on the merits before submitting the follow-on petitions. In fact, the petitioner did not initiate the new prior art search for the follow-on petitions until after the PTAB’s decision denying institution of the original petitions was issued. The PTAB’s decision stated that “we are concerned by the shifts in the prior art asserted and the related arguments in the follow-on petitions.”

Instead of arguing why the prior art used in the follow-on petitions could not have been found earlier, the petitioner argued that the PTAB should not have considered the Nvidia factors under 35 U.S.C. § 314(a) at all. The Petitioner further argued that the PTAB should have considered only 35 U.S.C. § 325(d), which focuses on whether “the same or substantially the same prior art or arguments [were previously] presented to the Office.” The petitioner argued that § 325(d) was the only relevant statute to consider when determining whether to institute a follow-on petition. The PTAB disagreed, finding no statutory language or legislative history that was intended to limit the discretion whether to institute under § 314(a).

General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper No. 19 (PTAB Sept. 6, 2017).

Share This Insight

Categories

Patent Trial & Appeal Board
Subscribe to the IP Newsflash Blog Series >

Previous Entries

IP Newsflash

November 17,2025

The district of Delaware recently denied a defendant’s partial motion to dismiss pre-suit willful infringement from the litigation, finding instead that the allegations taken as a whole were sufficient to support pre-suit willfulness at the pleading stage. Specifically, the court found that the allegations as to the defendant’s involvement in a related foreign opposition proceeding and participation in the relevant industry were accompanied by detailed factual support that sufficiently pleaded willful infringement for the pre-suit period.

...

Read More

IP Newsflash

November 14, 2025

The Ninth Circuit recently reversed a district court’s decision to strike a plaintiff’s trade secret claims under the Defend Trade Secrets Act (DTSA) at the discovery stage. In doing so, the Ninth Circuit made clear that under the DTSA, whether a party defined their trade secret with sufficient particularity is a question of fact that generally does not lend itself to resolution in the absence of at least some discovery. This ruling contrasts with the California Uniform Trade Secrets Act (CUTSA), which requires a party to define their trade secrets with reasonable particularity before commencing discovery.

...

Read More

IP Newsflash

November 11, 2025

The Federal Circuit recently vacated a summary judgment ruling of invalidity, holding that the district court erred in applying preclusive effect to the Patent Trial and Appeal Board’s unpatentability findings regarding other claims in the same patent. In doing so, the Federal Circuit reiterated that issue preclusion does not apply where the prior factual determinations were made under a lower standard of proof.

...

Read More

IP Newsflash

November 3, 2025

The Federal Circuit recently clarified the requirement for work disclosed in a reference to qualify as “by another” under pre-AIA Sections 102(a) and (e), holding that there must be complete inventive identity between the information disclosed in the asserted reference and the inventors named on the relevant patent. 

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.