“If at first you don’t succeed, try, try again…” may not be an appropriate mantra for the PTAB.  Today, the PTAB made precedential an opinion that was initially issued on September 6, 2017 regarding the appropriateness of “follow-on” petitions and the factors PTAB panels must consider when deciding whether to allow follow-on petitions. See General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha.

A follow-on petition is a petition filed after an earlier filed petition was unsuccessful.  For example, in General Plastic, Petitioner filed a first set of petitions seeking Inter Partes Review of two patents.  For each of these petitions, an IPR trial was denied on the merits.  Nine months later, Petitioner filed a second set of (follow-on) petitions against the same patents.  The PTAB denied those petitions pursuant to 35 U.S.C. § 314(a), finding that the follow-on petitions should not be allowed in view of the denial of the earlier-filed petitions.

After Petitioner filed a request for rehearing, the Chief Judge of the PTAB instituted an expanded panel which ultimately denied the requested rehearing.  In the rehearing request, Petitioner had argued, among other things, that follow-on petitions are expressly contemplated in the statute implementing IPRs, specifically in 35 U.S.C. § 325(d).  And, further, any consideration of follow-on petitions should be governed by § 325(d) which only allows rejection of follow-on petitions when the same or substantially the same art or arguments were previously presented to the PTO.

In the end, the Board maintained the stance on follow-on petitions first articulated in the NVIDIA case, holding that it’s discretion is derived from § 314(a).  Of course, now, that position is mandatory to all panels through this precedential opinion.  As review, below are the non-exhaustive NVIDIA factors to consider:

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.

A key takeaway from this decision is that the PTAB has chosen to address the follow-on petition issue under a broadly-construed reading of § 314(a), rather than the seemingly more on point (and narrower) provisions of § 325(d).  Is this rule-making by PTAB decision, of the type recently over-turned in Aqua Products?  We predict that time (and the Federal Circuit) will soon tell.