Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha

When a petitioner files a follow-on petition challenging the same claims of the same patent after an earlier petition was denied, the Board may exercise its discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to deny institution after weighing the non-exhaustive seven NVIDIA factors, including whether the petitioner knew or should have known of the art (reasonable diligence), the timing and explanation for the later filing, whether it had the patent owner's preliminary response and the Board's institution decision, Board resources, and the one-year deadline. There is no per se bar on follow-on petitions, and § 325(d) is not the sole basis for denying them. The decision confirms and reiterates the NVIDIA factors, which the Board had applied in earlier decisions (NVIDIA, LG Electronics, and Xactware are cited), and it adds that the list is non-exhaustive and a baseline. It rejects the argument that § 325(d) is the exclusive tool for follow-on petitions and that § 314(a) discretion is limited to backlog or one-year-deadline concerns. A petitioner filing a second petition against the same claims, especially after seeing the preliminary response or institution decision, must be ready to explain why the new art could not have been found earlier with reasonable diligence and why the delay was justified. A patent owner can invoke § 314(a) and these factors against serial, staggered petitions that use Board decisions as a roadmap, even where the art is not the same or substantially the same as before. The Board relied on Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016), for the point that institution is committed to the Director's discretion, and it reviewed rehearing for abuse of discretion under cases such as Star Fruits. LEGAL TEST OR STANDARD: Non-exhaustive NVIDIA factors: 1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition 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; 4. 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; 5. 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; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. The Board said additional factors may arise and these serve as a baseline. TRIGGERING FACTS: Petitioner's first petitions against the '820 and '094 patents were denied on the merits. Nine months after filing them, and after the preliminary responses, the denial decisions and the rehearing denials, it filed five follow-on petitions against the same patents and the same claims using new art. It gave no meaningful explanation for the delay or why the art could not have been found earlier with reasonable diligence. Its new searches began only after the denials, and it shifted its challenges to cure the deficiencies the Board had identified. Six of the seven factors weighed against institution. KEY QUOTE: "There 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." (Paper 19, p. 15) PRIOR PRECEDENT AFFECTED: Follows and reiterates NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134 (PTAB May 4, 2016) (Paper 9), and cites LG Elecs. Inc. v. Core Wireless Licensing S.A.R.L., Case IPR2016-00986 (PTAB Aug. 22, 2016) (Paper 12), and Xactware Sols., Inc. v. Eagle View Techs., Inc., Case IPR2017-00034 (PTAB Apr. 13, 2017) (Paper 9). It also cites Conopco, Inc. v. Proctor & Gamble Co., Case IPR2014-00506 (PTAB Dec. 10, 2014) (Paper 25) (informative), and Toyota Motor Corp. v. Cellport Sys., Inc., Case IPR2015-01423 (PTAB Oct. 28, 2015) (Paper 7). It treats the non-precedential Microsoft and Atlas institution decisions as decided on their own facts. PRACTICE TIP: Before filing any follow-on petition against claims already challenged, put the explanation in the petition or authorized reply. Show why the new art could not have been found earlier with reasonable diligence, explain the timing, and show any changed circumstances that were objectively reasonable. Arguments raised first on rehearing were not considered.