PTAB Designates as “Informative” Expanded PTAB Panel Decision Adopting the Seven NVIDIA Factors For Evaluating Follow-On Petitions

| Benjamin Anger

The PTAB’s Chief Administrative Patent Judge and Deputy Chief Administrative Patent Judge joined an expanded PTAB panel that adopted the seven NVIDIA factors and denied institution of the Petitioner’s follow-on petitions in General Plastic Industrial Co., Ltd., v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. September 6, 2017). The PTAB designated the decision as “Informative” on September 18, 2017, meaning the decision is not binding on other panels but is meant to offer the Board’s general consensus and guidance for determining whether to institute follow-on petitions.

General Plastic filed a first set of petitions seeking IPR of two Canon patents. The PTAB denied institution of the IPRs and also denied General Plastic’s requests for rehearing. General Plastic then filed three new follow-on petitions against the same patents based on new prior art it claimed to have discovered after the first set of IPRs. The PTAB denied institution of these follow-on petitions pursuant to 35 U.S.C. § 314(a), applying the seven factors found in NVIDIA Corp. v. Samsung Elec. Co., IPR2016-00134, Paper 9 (P.T.A.B. May 4, 2016).

General Plastic filed requests for rehearing of the denied follow-on IPRs, and additionally requested an expanded panel to hear the requests. General Plastic argued that the PTAB’s approach to denying follow-on petitions pursuant to § 314(a) directly conflicts with 35 U.S.C. § 325(d), stating “the discretion implicit in §314(a) should not amount to a de facto bar against all second petitions filed after the denial of the first petition so as to render §325(d) superfluous.” IPR2016-01357, Paper 17 at 2.

The PTAB granted General Plastic’s request for an expanded panel, but determined the seven NVIDIA factors are appropriate for analyzing follow-on petitions under § 314(a). The seven NVIDIA factors are: (1) whether the same petitioner previously filed a petition directed to the same claims of the same patent; (2) whether the petitioner knew or should have known of the prior art asserted in the later petition when it filed its earlier petition; (3) whether at the time of filing of the later petition, the petitioner already received the patent owner’s preliminary response to the first petition or received the PTAB’s decision on whether to institute review in the earlier petition; (4) the length of time that elapsed between when the petitioner had the patent owner’s or PTAB’s analysis on the earlier petition and when petitioner filed the later petition; (5) whether the petitioner provides adequate explanation why the PTAB should permit another attack on the same claims of the same patent; (6) the finite resources of the PTAB; and (7) the requirement to issue a final determination not later than one year after institution. See IPR2016-00134, Paper 9 at 6-7 (P.T.A.B. May 4, 2016).

The expanded panel found six of the seven factors weighed against institution, with the exception of the last factor. For example, the PTAB explained that General Plastic provided no meaningful explanation for the delay between filing the first petitions and the follow-on petitions or why it could not have found the new prior art before filing the first petitions. The PTAB also found “[t]he filing of sequential attacks against the same claims, with the opportunity to morph positions along the way, imposes inequities on [the patent owner].” Finally, the PTAB found that its resources would be more fairly expended on initial petitions, rather than addressing follow-on petitions.

The PTAB emphasized that “[t]here is no per se rule precluding the filing of follow-on petitions after the Board’s denial of one or more first-filed petitions on the same patent.” Yet, this case indicates that, going forward, a petitioner bringing a follow-on petition should consider and address the NVIDIA factors given that follow-on petitions will be under increased scrutiny in view of this new “Informative” decision.