The America Invents Act contemplates the possibility of multiple inter partes review (IPR) challenges to the same patent. However, it authorizes the Patent and Trademark Office, in considering whether to institute an IPR, to take into account whether the same or substantially the same prior art or arguments were presented to the PTO in an earlier petition and to reject the later petition on the grounds of this redundancy.
This language, from 35 USC §325(d), could be read as providing a single, narrow basis for rejecting a request for an IPR that challenges a patent that was previously the subject of an IPR petition. If so, doesn’t it follow that, if the petitioner raises different prior art from before, or presents a new argument, this provision requires the PTO to initiate the IPR?
In September 2017, the Patent Trial and Appeal Board (PTAB), an administrative law body of the PTO, rejected that contention. It pointed to a separate provision of the America Invents Act, 35 USC §314(a), which makes the decision of whether or not to initiate an IPR a matter of the PTO’s discretion. According to the PTAB, this general rule applies in the case of follow-on petitions as well as initial petitions. In October 2017, the PTAB designated its September 2017 opinion as precedential.
In that case, a PTAB judge had denied the request of General Plastic Industrial Co., Ltd. that the PTAB commence an IPR. The petitioner requested a rehearing. A panel of seven PTAB judges, including the Chief Administrative Patent Judge, denied this request.
The opinion does more than assert the PTO’s right to reject IPR petitions in its discretion. It also listed factors that it will consider when faced with a follow-on petition asserted by the same party that asserted the first petition. Here are the factors:
This language, from 35 USC §325(d), could be read as providing a single, narrow basis for rejecting a request for an IPR that challenges a patent that was previously the subject of an IPR petition. If so, doesn’t it follow that, if the petitioner raises different prior art from before, or presents a new argument, this provision requires the PTO to initiate the IPR?
In September 2017, the Patent Trial and Appeal Board (PTAB), an administrative law body of the PTO, rejected that contention. It pointed to a separate provision of the America Invents Act, 35 USC §314(a), which makes the decision of whether or not to initiate an IPR a matter of the PTO’s discretion. According to the PTAB, this general rule applies in the case of follow-on petitions as well as initial petitions. In October 2017, the PTAB designated its September 2017 opinion as precedential.
In that case, a PTAB judge had denied the request of General Plastic Industrial Co., Ltd. that the PTAB commence an IPR. The petitioner requested a rehearing. A panel of seven PTAB judges, including the Chief Administrative Patent Judge, denied this request.
The opinion does more than assert the PTO’s right to reject IPR petitions in its discretion. It also listed factors that it will consider when faced with a follow-on petition asserted by the same party that asserted the first petition. Here are the factors:
- Whether the same petitioner previously filed a petition directed to the same claims of the same patent;
- Whether at the time the first petition was filed the petitioner knew or should have known of the prior art asserted in the second petition;
- Whether at the time the second petition was filed the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition;
- The length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition;
- Whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent;
- The finite resources of the PTAB; and
- The requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than one year after the date on which the Director formally institutes the IPR. More...
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