General Plastic v. Canon (IPR2016-01357): The Follow-on Petition Factors

General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357 (Paper 19, September 6, 2017), is the decision most often cited when a petitioner files a second or later petition against claims it has already challenged. An expanded seven-judge panel, including the Chief and Deputy Chief Administrative Patent Judges, issued a single decision on rehearing covering five related proceedings (IPR2016-01357 through -01361) involving two Canon patents on toner supply containers.

The Board first designated the decision informative and later designated it precedential, which is why this page appears under both categories. Designations can change, and the USPTO’s discretionary-denial practice has changed repeatedly since 2017, so readers should check the USPTO’s current list of precedential and informative decisions and its current guidance before relying on this case.

Background

In September 2015 General Plastic filed two inter partes review petitions, one against each patent, based mainly on a reference called Matsuoka. The Board denied institution on the merits in March 2016 and denied rehearing in May 2016.

In July 2016, about nine months after the first petitions, General Plastic filed five follow-on petitions against the same claims, relying on newly found references. By then it had Canon’s preliminary responses, the decisions denying institution and the rehearing decisions. The Board denied all five follow-on petitions as a matter of discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a). General Plastic asked for rehearing and for an expanded panel.

General Plastic argued that nothing in the statute limits a petitioner to one petition, that § 325(d) is the specific provision governing repeat challenges and applies only to the same or substantially the same art or arguments, and that discretion under § 314(a) was meant only as a safety valve for Board backlog.

What the Board decided

The Chief Judge expanded the panel because of the importance of the issue; the decision notes that parties cannot themselves obtain an expanded panel, although they may suggest one. On the merits, the panel denied rehearing.

The Board held that institution is discretionary because § 314(a) says when review “may not” be instituted but never requires it. Section 325(d) is itself permissive, so it is not the only consideration and does not displace § 314(a). Nothing in the statute confines discretion to periods of high caseload.

The Board then set out a non-exhaustive list of factors, first used in NVIDIA Corp. v. Samsung, for evaluating follow-on petitions:

1. whether the same petitioner previously filed a petition directed to the same claims of the same patent;
2. whether, when it filed the first petition, the petitioner knew or should have known of the prior art asserted in the second;
3. whether, when it filed the second petition, the petitioner had already received the patent owner’s preliminary response or the Board’s institution decision on the first;
4. how much time passed between learning of the new art and filing the second petition;
5. whether the petitioner adequately explains that delay;
6. the finite resources of the Board; and
7. the statutory requirement to issue a final decision within one year of institution.

Six of the seven factors weighed against institution. On factor 2, the Board explained that the question is whether the new art could have been found with reasonable diligence, and General Plastic offered no explanation why its earlier searches missed it. Its new searches began only after the first denials, and its new petitions shifted positions to fix the deficiencies the Board had identified, using the earlier decisions as a “roadmap.” The Board also refused to consider a new argument that its claim construction was surprising, because it had not been raised in the authorized reply, and found any surprise objectively unreasonable in any event.

Why it matters

General Plastic shifted the practical question for a second petition from “is this art new?” to “why is this petition coming now?” The factors focus on fairness to patent owners and on whether a petitioner benefited from seeing the patent owner’s arguments and the Board’s reasoning before refiling. A petitioner that holds art back, or that refiles after a loss, needs a credible explanation grounded in diligence.

The case also links to the earlier Conopco v. Procter & Gamble rehearing decision, which the panel cited for the same concerns; see the note on Conopco v. Procter & Gamble. For how discretion fits with the statutory thresholds, see the different threshold standards.

Later developments

The Board later applied the factors to a different petitioner with a significant relationship to the first, in Valve Corp. v. Electronic Scripting Products. Discretionary-denial practice more broadly has been revised many times by guidance, rule changes and Director decisions. Treat this case as the origin of the serial-petition analysis and check current USPTO guidance for how it is applied today.

Key takeaways

• An expanded panel held that § 314(a) gives the Board discretion to deny follow-on petitions, independent of § 325(d).
• The seven factors are a non-exhaustive baseline weighed case by case; there is no per se bar.
• Timing matters most: refiling after seeing the preliminary response or a denial, without explaining why the art could not have been found earlier, weighs heavily against institution.
• The decision was designated informative and then precedential; check the USPTO’s current lists and guidance.