United States: PTAB Establishes Criteria Governing Follow-On Petitions For AIA Post Grant Proceedings

General Plastic Industrial Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017)

A familiar strategy in inter partes ("IPR") review proceedings under the America Invents Act ("AIA") is for petitioners to file multiple petitions challenging claims in an issued patent, including "follow-on" petitions filed after the initial petition for review. By using multiple petitions, a challenger may present unpatentability arguments and advance prior art that could not be adequately framed effectively in a single petition due to page limitations. Patent owners have criticized the practice of filing multiple related AIA petitions as harassment that increases the costs of defending a patent in post grant proceedings. In a recent precedential decision, the Patent Trial and Appeal Board ("PTAB") denied institution of "follow-on" petitions and announced criteria that is likely to restrict the practice of filing multiple serial petitions in future cases.


In September 2015, the petitioner, General Plastic Industrial Co. ("General Plastic") filed two petitions for IPR review challenging claims in two patents owned by Canon Kabushiki Kaisha ("Canon") relating to printer toner cartridges. Each petition alleged that claims in a Canon patent were unpatentable in light of the same prior art reference. The PTAB denied institution in March 2016 based in part upon the Board's construction of the challenged claims. Subsequently, in July 2016, General Plastic filed five additional IPR petitions directed to the same claims in the Canon patents as the original petitions, but relying on new prior art references.

A three-judge PTAB panel denied institution of the follow-on petitions in November 2016, citing the Board's exercise of discretion under 35 U.S.C. § 314(a), which states that, "The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." See 37 C.F.R. § 42.108(a) ("At any time prior to institution of inter partes review, the Board may deny some or all grounds for unpatentability for some or all of the challenged claims."). General Plastic filed requests for rehearing in each of the petitions. At the initiation of the Chief Judge, an expanded PTAB panel decided the requests and issued a single opinion denying rehearing in all of the petitions.

Guidelines for "Follow-On" IPR Petitions

In denying the requests, the Board rejected General Plastic's arguments that the decision not to institute on the follow-on petitions was inconsistent with the Patent Act and the Board's practice in other cases. The Board reiterated seven nonexclusive factors relevant to its decision to initiate review of a second or subsequent petition for review of the  same patent:

  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.

Slip op. at 16; See NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134 (PTAB May 4, 2016) (Paper 9) (listing a similar set of considerations).

Regarding General Plastic's follow-on IPR petitions, the PTAB reiterated its decision not to institute review, concluding that six of the seven factors weighed against institution. Among other things, the expanded panel noted that:

  • The follow-on petitions challenged the same claims as the initial petitions;
  • General Plastics waited nine months to file the follow-on petitions;
  • General Plastics filed the follow-on petition after the PTAB issued its decision denying the initial petitions;
  • General Plastics did not explain why the references cited in the follow-on petitions could not have been found earlier through reasonable diligence;
  • No "changed circumstances" existed that justified new prior art searches and or the follow-on petitions; and
  • "[M]ultiple, staggered petition filings . . . are an inefficient use of the inter partes review process and the Board's resources."

The Board was critical of General Plastic's strategy, which essentially sought a second bite at the apple in seeking review, using arguments formulated based on the patent owner's response to the initial petition and the Board's reasoning in denying institution on those petitions. In the initial decision denying institution, the panel noted that:

[The] Petitioner had modified its challenges in the follow-on petitions in an attempt to cure the deficiencies that the Board identified in its first-filed petitions. More specifically, the newly-asserted prior art . . . was a shift in Petitioner's positions and arguments from the first-filed petitions based on the analysis articulated in our Decisions Denying Institution of those petitions. Moreover, the shift in Petitioner's challenges was not the consequence of a position that Patent Owner surprisingly advanced or the Board surprisingly adopted[.]

Slip op, at 11. As a result, the Board concluded that "[t]he filing of sequential attacks against the same claims, with the opportunity to morph positions along the way, imposes inequities on [Patent Owner]." Id.

In the expanded panel's decision denying General Plastic's request for rehearing, the board announced that when exercising its discretion to institute, it will consider both the AIA's goal of providing an "effective and efficient alternative" to federal court litigation, but also "the potential for abuse of the review process by repeated attacks on patents." As a result, the Board will exercise its discretion to protect patent owners for harassment through serial petitions for review:

Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review. All other factors aside, this is unfair to patent owners and is an inefficient use of the inter partes review process and other postgrant review processes. Considering other factors (i.e., factors 2, 4, and 5) allows us to assess and weigh whether a petitioner should have or could have raised the new challenges earlier.

Slip op. at 21.

Practical Significance

The General Plastic decision continues the Board's trend towards curbing petitioner tactics that it views as harassing to patent owners and a waste of PTAB resources. Although the decision notes that follow-on petitions for review may be justified in some circumstances, it disfavors the strategy of filing waves of petitions designed to leverage the results of earlier petitions. Petitioners should attempt to file multiple petitions challenging the same patent at the same time, or as soon as possible after the initial petition filing. Petitioners should also consider structuring the petitions to challenge different claims and minimize overlap. If a follow-on petition is filed significantly later than the initial petition, the petitioner should be prepared to demonstrate why newly cited prior art was not available earlier, and could not have been located through a diligent search. In addition petitioners should avoid "shifting" their unpatentability arguments in follow-on petitions unless a truly surprising development in the earlier proceeding justifies the shift.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.