In cases where petitioners want a “second bite at the IPR apple,” the Patent Trial and Appeal Board (PTAB) has issued an informative decision stating that it wants an explanation for the delay between the original and follow-on petitions. In General Plastic v. Canon, where the petitioner submitted follow-on petitions, but did not include an explanation about why the prior art could not have been found earlier and why the follow-on petitions could not have been submitted sooner, the PTAB denied institution and a request for rehearing for the follow-on petitions.

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).