The America Invents Act contemplates the possibility of multiple inter partes review (IPR) challenges to the same patent. However, it authorizes the Patent and Trademark Office, in considering whether to institute an IPR, to take into account whether the same or substantially the same prior art or arguments were presented to the PTO in an earlier petition and to reject the later petition on the grounds of this redundancy.

This language, from 35 USC §325(d), could be read as providing a single, narrow basis for rejecting a request for an IPR that challenges a patent that was previously the subject of an IPR petition. If so, doesn’t it follow that, if the petitioner raises different prior art from before, or presents a new argument, this provision requires the PTO to initiate the IPR?

In September 2017, the Patent Trial and Appeal Board (PTAB), an administrative law body of the PTO, rejected that contention. It pointed to a separate provision of the America Invents Act, 35 USC §314(a), which makes the decision of whether or not to initiate an IPR a matter of the PTO’s discretion. According to the PTAB, this general rule applies in the case of follow-on petitions as well as initial petitions. In October 2017, the PTAB designated its September 2017 opinion as precedential.

In that case, a PTAB judge had denied the request of General Plastic Industrial Co., Ltd. that the PTAB commence an IPR. The petitioner requested a rehearing. A panel of seven PTAB judges, including the Chief Administrative Patent Judge, denied this request.

The opinion does more than assert the PTO’s right to reject IPR petitions in its discretion. It also listed factors that it will consider when faced with a follow-on petition asserted by the same party that asserted the first petition. Here are the factors:

1. Whether the same petitioner previously filed a petition directed to the same claims of the same patent;
2. Whether at the time the first petition was filed the petitioner knew or should have known of the prior art asserted in the second petition;
3. Whether at the time the second petition was filed 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 PTAB; and
7. The requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than one year after the date on which the Director formally institutes the IPR.

In the case before it, the PTAB had little patience for the production of new prior art that, in its opinion, should have been cited in the original petition. The PTAB also felt it was unfair to the patent owner to have to address follow-on petitions after the patent owner had filed its preliminary responses to the first-filed petition. It said:

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.

The PTAB panel found that six of the seven factors disfavored the follow-on petition. As to factor 1, it said that the same claims of the same patent were at issue in the follow-on petitions. Regarding factor 2, the follow-on petitions were all filed nine months after the filing of the first-filed petitions. At that time, the patent owner had filed its preliminary responses to the first-filed petitions and the Board had issued its decisions regarding the first-filed petitions, causing factor 3 to work against the petitioner.

Factor 5 also hurt the petitioner because it had provided no meaningful explanation for the delay in filing the follow-on petitions. Citing factor 6, the PTAB said that the Board’s resources would be more fairly expended on initial petitions, rather than follow-on petitions.

The PTAB’s decision in General Plastic Industrial Co. provides guidance to patent owners facing repetitious IPR petitions challenging the same patents and compels petitioners to be thorough in assembling their arguments in their first IPR petitions. They might not get a second chance.