{"id":1750,"date":"2017-09-06T22:31:16","date_gmt":"2017-09-07T02:31:16","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1750"},"modified":"2017-09-08T23:02:58","modified_gmt":"2017-09-09T03:02:58","slug":"follow-on-ipr-petitions-are-unfair-to-patent-owners-and-an-inefficient-use-of-the-process","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1750","title":{"rendered":"Follow-on IPR Petitions are Unfair to Patent\u00a0Owners and an Inefficient Use of the Process"},"content":{"rendered":"

In\u00a0General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha<\/em>, \u00a0IPR2016-01357, \u00a0Paper 19, (September 6, 2017), and\u00a0IPR2016-01358, IPR2016-01359, IPR2016-01360, and IPR2016-01361, an expanded panel of the PTAB denied reconsideration of the\u00a0Decision Denying Institution.<\/p>\n

Petitioner filed a first set of\u00a0petitions seeking inter partes review of U.S. Patent No. 9,046,820 and U.S. Patent No. 8,909,094, which were denied based upon the merits. Nine months after the filing of the first set of petitions, Petitioner filed five follow-on petitions, two against the ‘820 patent, and three against the ‘094 patent, all of which were denied pursuant to 35 U.S.C. \u00a7 314(a) and 37 C.F.R. \u00a7 42.108(a).<\/p>\n

In exercising its discretion to deny each of the follow-on petitions, the Board considered the seven NVIDIA factors:<\/p>\n

    \n
  1. Whether the same petitioner previously filed a petition directed to the\u00a0same claims of the same patent;<\/li>\n
  2. Whether at the time of filing of the first petition the petitioner knew of\u00a0the prior art asserted in the second petition or should have known of\u00a0it;<\/li>\n
  3. Whether at the time of filing of the second petition the petitioner
    \nalready received the patent owner\u2019s preliminary response to the first\u00a0petition or received the Board\u2019s decision on whether to institute
    \nreview in the first petition;<\/li>\n
  4. The length of time that elapsed between the time the petitioner learned\u00a0of the prior art asserted in the second petition and the filing of the\u00a0second petition;<\/li>\n
  5. Whether the petitioner provides adequate explanation for the time
    \nelapsed between the filings of multiple petitions directed to the same\u00a0claims of the same patent;<\/li>\n
  6. The finite resources of the Board; and<\/li>\n
  7. The requirement under 35 U.S.C. \u00a7 316(a)(11) to issue a final
    \ndetermination not later than 1 year after the date on which the Director\u00a0notices institution of review<\/li>\n<\/ol>\n

    Applying these factors to the follow-on petitions, the Board concluded that the\u00a0circumstances did not warrant institution of inter partes reviews. \u00a0As to Factor 1, the Board noted that the same claims of the same\u00a0patent were at issue in the follow-on petitions as in the denied petitions. \u00a0As to Factors 2 and 3, the follow-on petitions were all filed nine months
    \nafter the filing of the first-filed petitions, and after Patent Owner had filed its Preliminary Responses to the first-filed\u00a0petitions, and after the Board had denied institution, without any meaningful explanation for the delay. With respect to Factors 4 and 5, Petitioner provided no explanation of any unexpected circumstances that prompted the new prior art searches, or for the delay in doing so. \u00a0With respect to Factor 6, the Board found that its resources would be more fairly\u00a0expended on initial petitions, rather than follow-on petitions.<\/p>\n

    In addition the Board found that\u00a0that Petitioner had modified its challenges in the\u00a0follow-on petitions in an attempt to cure the deficiencies that the Board identified\u00a0in its first-filed petitions, and that this shift tin Petitioner\u2019s challenges was not the\u00a0consequence of a position that Patent Owner surprisingly advanced or the Board\u00a0surprisingly adopted. \u00a0The Board found that the filing\u00a0of sequential attacks against the same claims, with the opportunity to morph\u00a0positions along the way, imposes inequities on Patent Owner.<\/p>\n

    On rehearing the expanded Board rejected the arguments raised by petitioner. \u00a0 The expanded board agreed that there is no per se rule precluding the filing of follow-on petitions, and noted that it has consistently considered a number of factors. \u00a0The Board recognized that an\u00a0objective of the AIA is to provide an effective and efficient alternative to district\u00a0court litigation, but also recognized the potential for abuse of the review process by\u00a0repeated attacks on patents. \u00a0The Board said that multiple,\u00a0staggered petitions challenging the same patent and same claims raise the potential\u00a0for abuse. The absence of any restrictions on follow-on petitions would allow\u00a0petitioners the opportunity to strategically stage their prior art and arguments in\u00a0multiple petitions, using our decisions as a roadmap, until a ground is found that\u00a0results in the grant of review. \u00a0This is unfair to patent\u00a0owners and is an inefficient use of the inter partes review process and other postgrant\u00a0review processes.<\/p>\n

    The Board\u00a0recognized that there may be circumstances where multiple petitions by\u00a0the same petitioner against the same claims of a patent should be permitted, said that the factors it uses\u00a0represents a formulation of relevant considerations, and while there may be additional factors, the identified factors are a good baseline. \u00a0The Board reiterated that institution is committed the this discretion of the Commission, acting through the Board. \u00a0Reweighing the factors on rehearing, the Board found that\u00a0six\u00a0of the seven factors weigh against institution.<\/p>\n

     <\/p>\n

     <\/p>\n

     <\/p>\n","protected":false},"excerpt":{"rendered":"

    In\u00a0General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, \u00a0IPR2016-01357, \u00a0Paper 19, (September 6, 2017), and\u00a0IPR2016-01358, IPR2016-01359, IPR2016-01360, and IPR2016-01361, an expanded panel of the PTAB denied reconsideration of the\u00a0Decision Denying Institution. Petitioner filed a first set of\u00a0petitions seeking inter … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26,1],"tags":[],"class_list":["post-1750","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1750","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1750"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1750\/revisions"}],"predecessor-version":[{"id":1752,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1750\/revisions\/1752"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1750"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1750"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1750"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}