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.

Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
Jones Day
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
Jones Day
Related Articles
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions