PTAB Precedential Decision: Putting the Hammer Down on Filing Serial Petitions?

Petitioners for inter partes review (IPR) proceedings under the America Invents Act have routinely filed serial petitions to challenge a single patent. Many patent owners have criticized such “follow-on” petitions as abusive and prejudicial for a petitioner to get “multiple bites at the apple” in challenging the patent. In Fall 2017, The Patent Trial and Appeal Board (PTAB) provided some guidance, and possibly some relief to patent owners by designating as precedential the order General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017). General Plastic set out seven non-exhaustive factors to guide the PTAB’s analysis of such follow-on petitions.

Ashley Klein and Warren Thomas recently published an article in the Chicago-Kent Journal of Intellectual Property, in partnership with the PTAB Bar Association, examining the follow-on petition issue and the PTAB’s exercise of its discretion to deny them in the wake of General Plastic. The results so far suggest that the PTAB is tightening up significantly on instituting review based on follow-on petitions: The General Plastic factors have, as of this writing, been used to deny such petitions more frequently than they have been found to permit them. Regardless of the trend in outcomes, the PTAB’s early application of these factors shows that the game has changed for both petitioners and patent owners. Petitioners should be diligent and speedy in filing a follow-on petition or risk the PTAB denying institution. And patent owners and petitioners should be mindful of how they advocate their positions relating to these factors, and they should also consider tackling these issues head-on in both the petition and the patent owner’s preliminary response.

For more details and analysis download a copy of the article below or at the Chicago-Kent Journal of Intellectual Property’s website: https://scholarship.kentlaw.iit.edu/ckjip/vol17/iss3/4/.

excerpted from Ashley N. Klein & Warren J. Thomas, PTAB Precedential Decision: Putting the Hammer Down on Filing Serial Petitions?, 17 Chi.-Kent J. Intell. Prop. | PTAB Bar Assoc. 29 (2018)