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By Tony Dutra
The Patent and Trademark Office wants patent challengers to know that their first attempt to invalidate a patent should be comprehensive, and it will be watching for abusive serial petitions.
The Patent Trial and Appeal Board Sept. 18 elevated to “informative"—influential but not necessarily binding on future panels—a Sept. 6 ruling that challengers filing multiple, staggered petitions, and delaying arguments that could have been made the first time, is an abuse that hurts patent owners ( General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha , P.T.A.B., IPR2016-01357, 9/6/17 ). The practice of filing multiple petitions helps challengers learn from their failures at the PTAB so their subsequent second and third petitions are more successful.
A three-member panel denied challenger General Plastic Industrial Co.'s second petitions against Canon Kabushiki Kaisha’s toner cartridge patents. General Plastic’s rehearing request led PTAB Chief Administrative Patent Judge David P. Ruschke to expand the panel “due to the exceptional nature of the issues presented.” He joined the panel along with Deputy Chief Scott R. Boalick to emphasize the board’s concern that serial filing can be an abusive strategy.
The seven-member panel rejected General Plastic’s arguments to the extent they were based on a prior panels’ rulings. The board also provided a nonexclusive seven-factor framework for future panels to decide whether a follow-on petition is abusing the system.
Curtailing the practice of serial filing has been one of the top requests from patent owners when the PTO asked for suggestions to alter its post-grant opposition proceedings first made available in 2012 under the America Invents Act.
The Intellectual Property Owners Association expressed its concern over the potential “harassment” of patent owners in its 2015 comments to the PTO. However, the IPO also gave support for a second petition “where the patent owner preliminary response or decision on institution contains information that could not have been reasonably anticipated when filing the first petition.”
The agency has issued changes to its rules and procedures for patent challenges twice without addressing the issue. Ruschke said Sept. 12 in a PTAB “boardside chat” that informative and precedential opinions are sometimes preferred over rules changes as a way to get consistency among board panels.
The PTO did not immediately respond to Bloomberg BNA’s request for comment on why the opinion was not designated precedential, which would be binding in all patent validity trials. However, the board’s procedure for that declaration—requiring a vote from all 270 administrative patent judges (APJs)—may have made it difficult to get that designation in a short time.
Congress has before it a bill with a provision on the issue that favors patent owners. The Stronger Patents Act ( S.1390), introduced by Sen. Christopher A. Coons (D-Del.), would bar follow-on petitions “on any ground that the petitioner raised or reasonably could have raised in the initial petition.”
The PTAB’s review of General Plastic’s second petition hits on that point.
General Plastic argued that the PTAB’s rejection of its first challenges to Canon’s U.S. Patent Nos. 8,909,094 and 9,046,820 “surprised” the challenger with new information. That forced the company to search for a different set of patents and documents that preceded Canon’s invention date and could show patent invalidity.
The board disagreed. In the second petition, it said, the challenger must explain “why a reasonably diligent search could not have uncovered the newly applied prior art.” It’s not enough for the challenger to say it was surprised by the first petition rejection, the board said. General Plastic failed to show why its surprise was reasonable, the board said.
The board did not accuse General Plastic of being abusive to Canon in this instance. It said only that the seven-factor test could “take undue inequities and prejudices to Patent Owner into account,” even if abuse wasn’t identified as a specific factor.
APJ Sheila F. McShane wrote the board’s opinion, which was joined by Ruschke, Boalick, and APJs Jameson Lee, Michael R. Zecher, Thomas L. Giannetti, and Jennifer S. Bisk.
Locke Lord LLP represented General Plastic. Fitzpatrick, Cella, Harper & Scinto represented Canon.
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