On Sept. 6, 2017, in an expanded panel decision including Chief Judge Ruschke, the PTAB formally adopted the standard first introduced in NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134 (PTAB May 4, 2016), to determine when a petitioner can file a second petition against the same patent. The decision in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha (which has since been designated “influential”) is a clear warning shot to accused infringers that they need to maximize the quality and strength of any IPR petitions, as the PTAB is very unlikely to permit the same petitioner to file a second petition against the same claims under most circumstances. Given their clamoring for action by the PTAB against “serial attacks”, Patent Owners will view General Plastic as a significant win.

While the General Plastic decision professes that the NVidia factors allow for a flexible approach to determine whether to allow follow-on petitions, the decision appears to foreclose filing in most circumstances any “follow-on” petitions filed after receipt of an Institution Decision. Below is a brief analysis of the factors, as well as likely broader strategy implications stemming from the General Plastic decision.

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*This article first appeared in THE RECORDER, October 3, 2017.