Today the PTAB designated part of its decision in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) as precedential. In Section II.B.4.i of the decision—the only portion designated precedential—the Board addressed the issue of serial IPR petitions challenging the same patents.
The petitioner filed a set of follow-on IPR petitions after the Board denied institution of a set of petitions challenging the same patents. The Board also denied institution of the follow-on petitions after considering the following seven factors it stated would prevent inequities to the patent owner and would ensure efficiency of the IPR process:
While the Board denied institution, it did not create a per se rule against follow-on petitions. Instead, the Board stated that “there may be circumstances where multiple petitions by the same petitioner against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case.” (Paper 19 at 18.)
Chief Judge Ruschke had previously designated this opinion “informative” under the Board’s Standard Operating Procedure 2.