The recent Patent Trial and Appeal Board decision in General Plastic Industrial v. Canon Kabushiki Kaisha (PTAB September 6, 2017; Paper 19) has caused many commentators to note that patent owners should be pleased with the decision as favorable to them. Indeed, the PTAB articulated that “multiple, staggered petition filings, such as those here, are an inefficient use of the inter partes review process and the Board’s resources.” However, historically less than 50% of follow-on petitions by the same petitioner have been instituted. Therefore, it’s not clear that the decision in General Plastic will effect much of a change in the already-low institution rate of follow-on petitions. The language used by the expanded panel that “there is no per se rule precluding the filing of follow-on petitions” and that “there may be circumstances where multiple petitions by the same petitioner against the same claims of a patent should be permitted” indicate that the institution of such “follow-on” petitions should be considered exceptional.
For petitioners seeking to file follow-on petitions, however, the General Plastic decision provides guidance as to what may be considered such exceptional circumstances, by providing hints for how to maximize the chances of having a second petition instituted.