PTAB Precedential Decision: Putting the Hammer Down on Filing Serial Petitions?

Petitioners for inter partes review proceedings under the America Invents Act routinely file serial petitions to challenge a single patent. Patent owners have criticized such “follow-on” petitions as abusive. The Patent Trial and Appeal Board’s recent precedential opinion in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017), lays out seven non-exhaustive factors to guide the Board’s consideration of such “follow-on” petitions.

This Article summarizes the Board’s analysis of follow-on petitions prior to General Plastic, examines how General Plastic has affected petitioners’ success in having such petitions instituted, and suggests strategies for practitioners going-forward.