Director Vidal Reels In Discretionary Denials Under Section 314(a), PTAB Litigation Blog
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Under 35 U.S.C. § 314(a), the PTAB has discretion to deny institution of an inter partes review. In certain circumstances, the PTAB will discretionarily deny a petition because another petition challenging the same patent was filed previously. General Plastic Industries Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017). The PTAB considers seven factors in making this discretionary determination, including the first factor: “whether the same petitioner previously filed a petition directed to the same claims of the same patent.” Id. at 16. Applying these factors is not, however, “limited to instances when multiple petitions are filed by the same petitioner.” Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-0062, Paper 11 at 2, 9 (PTAB Apr. 2, 2019) (precedential). The General Plastic analysis may apply to unrelated subsequent petitioners if they have a “significant relationship” with the prior petitioner.. Id. at 9-10.
