Topic: “Follow-on” petitions by same petitioner

General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 thru -01361 (Sept. 9, 2017) (Paper No. 19)

Takeaway (1) (Precedential): The Board has broad discretion to deny “follow-on” petitions under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a).  When determining whether to institute follow-on petitions, the Board should consider the seven NVIDIA factors.

Takeaway (2) (Informative): The Chief Judge may expand a panel on a “suggestion” from a judge, panel, or party in a post-grant review. The standard operating procedure (PTAB SOP 1, 3 (§ III.A)) exemplifies some of the reasons why the Chief Judge might decide to expand a panel, for example [t]he proceeding or AIA Review involves an issue of exceptional importance.”

Takeaway (3): When considering a request for rehearing, the Board reviews its decision for an abuse of discretion, which may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. The party requesting rehearing bears the burden of showing that the decision should be modified by identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply.

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited, Case IPR2013-00324 (Nov. 21, 2013) (Paper 19)

Takeaway: The Board has broad discretion to deny “follow-on” petitions. The Board will not institute a follow-on petition that presents “the same or substantially the same prior art or argument” as a first petition by the same petitioner simply because the follow-on petition relies on a new prior art reference that the petitioner discovered only after filing the first petition.