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.

The Seven NVIDIA Factors

The expanded panel in General Plastic considered the seven factors originally laid out in NVIDIA v. Samsung Elec. (PTAB May 4, 2016; Paper 9). These factors can be shorthanded as follows:

(1) whether the same petitioner, patent, and claims are at issue;

(2) was second petition art known/should have been known when first petition was filed;

(3) had Patent Owner Preliminary Response or Institution Decision been received in the first petition at the time of filing the second petition;

(4) time elapsed between knowledge of art filed in second petition and petition filing;

(5) whether second petition explained time elapsed since first petition filing;

(6) PTAB resources; and

(7) one year final determination requirement.

The board designated this list of seven factors as a “baseline” and “non-exhaustive” list, leaving the door open for “additional factors [that] may arise in other cases.”

A petitioner’s control over factors 2 through 5 seemed particularly important to the General Plastic decision, whereas factors 1, 6, and 7 seemed less so. Factor 1 favored the patent owner, and the remainder of this article addresses those petitions that indeed are filed by the same petitioner, on the same patent and same claims. Factor 6—at least as it was articulated in General Plastics—generally is going to favor the petitioner: “the Board’s resources would be more fairly expended on initial petitions, rather than follow-on petitions.” Factor 7 most frequently is a consideration factoring into the number of grounds instituted and doesn’t appear to favor one party over the other.

The Importance of Timing

The most important consideration for a petitioner based on the seven NVIDIA factors appears to be time, as three of the seven factors address some aspect of the timing of the follow-on petition. Factor 3 addresses whether a POPR and/or institution decision has been issued in the first petition. These timelines are two and five months, respectively, from the notice of a filing date being accorded to the first petition. Factor 4 addresses the amount of time elapsed between knowledge of art relied on in the second petition and the second petition filing (which knowledge may pre-date the filing of the first petition in the case of overlapping art between the two petitions). Factor 5 addresses whether a petitioner has provided an adequate explanation of the time elapsed between petition filings.

Of these, the act of filing the follow-on petition after the institution decision in the first petition (factor 3) appeared to raise the biggest red flag for the PTAB. The expanded panel in General Plastic cautioned against using the first institution decision “as a roadmap” for the follow-on petition, citing its decision in Butamax Advanced Biofuels v. Gevo (PTAB Oct. 14, 2014; Paper 8), in which it called follow-on petitions “second bites at the apple.” As in other cases, the PTAB found such “staggered” petitions “unfair” to the patent owner, noting that first petition institution decisions should not be used as a “feedback loop” for petitioners to perfect their challenges, citing v. Cronos Tech. (PTAB June 15, 2015; Paper 7), and that second petitions are not a time for modifying challenges to cure the board-identified deficiencies of a prior petition.

The expended panel in General Plastic said it believed the nine months that had elapsed between the filing of the first and second petitions (factor 5) was too long. Importantly, this date was a full four months after the institution decision was issued in response to the first petition (factor 3). Factor 4 seemed to weigh less heavily in this case than factors 3 or 5, seemingly because the petitioner did not begin an additional search for relevant art until after the institution decision in the first case (going to factor 3). This timing seemed to weigh more heavily than the relatively short timeframe that the new art was known, and also appeared to contribute to the weight of factor 2 (whether art was known/should have been known).

The best bet for a petitioner seeking to file a follow-on petition on the same patent and the same claims seems to be to file it as soon as feasible, and provide a well-articulated rationale for the time elapsed between the first and second petition filings. If a petitioner can file the second petition within two months—before the POPR due date or, at minimum, within five months—before the PTAB has rendered an institution decision in the first case, a petitioner has a stronger basis to argue, at minimum, that it did not use the institution decision “as a roadmap” to cure deficiencies in the first filing.

Along with reducing the time between filings to two-to-five months, if a petitioner can articulate a persuasive rationale for the delay, such as changed circumstances or procedural issues, the PTAB seemed willing to consider those arguments. Several times the expanded panel in General Plastic noted that the petitioner provided “no meaningful explanation for the delay in filing the follow-on petitions” and “no explanation…of any unexpected circumstances,” indicating that some rationales for delayed filings may be convincing to the board. The board provided one piece of further guidance, noting that in this case the second petition “was not the consequence of a position that the patent owner surprisingly advanced or the board surprisingly adopted”— hinting at circumstances that might serve as a legitimate basis for a follow-on petition.

Petitioners should continue to keep in mind that the concept of institution is discretionary. By addressing the seven NVIDIA factors head-on in a follow-on petition, a petitioner may provide the PTAB with the rationale it needs to show support for a discretionary decision to institute. In addition, a persuasive argument may end up holding even more weight if the PTAB panel finds something in the petitioner’s rationale that could support “other factors” for which the expanded panel in General Plastic left open the possibility.