The Board typically denies institution of an IPR when the petition fails to establish a reasonable likelihood that the petitioner will prevail on the merits. The Board also has discretion to deny institution for other reasons, including where the petition is merely a follow-on petition challenging the same claims that were challenged in an earlier petition. For follow-on petitions, the Board examines the following seven non-exclusive factors from its precedential General Plastic decision:
- whether the same petitioner previously filed a petition directed to the same claims of the same patent;
- 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;
- 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;
- 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;
- 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;
- the finite resources of the Board; and
- 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.
In this case, the Board found that all but one of the General Plastic factors weighed against institution and that the remaining factor, number 7, was neutral. In light of the fact that BMW had already challenged the ’342 patent in a previous petition, BMW emphasized that the second petition was based on a new prior art reference, Michmerhuizen, that BMW had not identified in its previous prior art search. The Board did not find this fact persuasive.
While the Board credited BMW’s assertion that it did not find the Michmerhuizen reference in an earlier search, the Board criticized BMW for failing to address whether it could have discovered Michmerhuizen in that search. Ultimately, the Board concluded that “Petitioner does not persuade us that through reasonable diligence it could not have located Michmerhuizen in its prior search or that it has not benefitted from the delay in finding the reference.”
The Board was also skeptical of the timing of BMW’s follow-on petition, stating that, although the prior art search uncovering Michmerhuizen was conducted by February 2018, “Petitioner waited until April 24, 2018, after receiving the Board’s decision denying review in [the previous IPR], on April 20, 2018, before filing this Petition.”
Finally, when considering the sixth factor, “the finite resources of the Board,” the Board considered the “similarity (if not exact identity) of the arguments in BMW’s prior challenge, added to the twelve other unsuccessful petitions the Board has already considered.” The Board found that these facts weighed “heavily” against institution.
Practice Tip:
Petitioners filing follow-on petitions should put particular emphasis on explaining, with evidentiary support if possible, why they could not have asserted the grounds in a previous petition. Merely showing that the follow-on petition is based on newly-discovered prior art may be insufficient without also showing why the prior art could not have been discovered earlier. In addition, a follow-on petition should be filed as soon as possible after uncovering a new ground, and ideally before the issuance of an institution decision in the earlier proceeding.
BMW of North America, LLC et al v. Blitzsafe Texas, LLC, IPR2018-00926, October 19, 2018