IPR2016-01357, -01358, -01359, -01360 and -01361 (P.T.A.B. 2017)
Fitzpatrick Client Canon Defeats Serial IPR Petitions in Rare, Precedential Decision
On October 18, 2017, the Patent Trial and Appeal Board designated its expanded panel decision in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha as precedential, marking the first and only time that the Board had designated an IPR decision as precedential this year. The decision, which the Board issued on September 6, 2017, and characterized as being of “exceptional importance,” confirmed that it was proper to deny five separate petitions filed by General Plastic, and set forth the factors that the Board will consider when faced with serial IPR petitions against the same patent.
General Plastic filed a first set of IPR petitions in late 2015 challenging claims of Canon’s U.S. Patent Nos. 9,046,820 and 8,909,094, which relate to toner bottles for use in copiers. The Board denied institution of IPR because General Plastic’s invalidity challenges lacked merit. Nine months later General Plastic filed five follow-on petitions against the same patents, relying primarily on different prior art that General Plastic claimed it found after the Board denied its first set of petitions.
At Fitzpatrick’s urging, the Board exercised its discretion not to institute IPR based on the follow-on petitions pursuant to 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a). In denying institution, the Board considered seven factors and concluded that they strongly favored non-institution. The Board noted that General Plastic was challenging the same claims of the same patents that it had challenged earlier, General Plastic had modified its challenges in the follow-on petitions in an attempt to cure deficiencies that the Board identified in the earlier petitions, and General Plastic failed to explain why it could not have found the new prior art earlier.
General Plastic thereafter requested rehearing. An expanded panel denied General Plastic’s request for rehearing on September 6, 2017, and confirmed that the Board may exercise its discretion to deny serial petitions in appropriate circumstances such as those here. The Board subsequently designated its decision denying rehearing as precedential, which is the highest of four designations that a Board opinion may receive. This is the first and only IPR decision in 2017 that the Board has designated as precedential, and one of fewer than forty decisions that the Board or its predecessor has designated as precedential over the last twenty years.
Canon was represented by Fitzpatrick attorneys Michael Sandonato, Edmund Haughey, Justin Oliver and Erin Austin.