![qtq80kU6lXl1080x675](/-/media/images/publications/2021/02/followon-petitions-must-be-justified-and-timely/articleimage/qtq80ku6lxl1080x675.jpeg?rev=e40e441033c2499e87072256120e1cfe&la=en&h=675&w=1080&hash=E2FB4C9580C0DDBAB3BC1D1C27461707)
Follow-On Petitions Must Be Justified and Timely, PTAB Litigation Blog
Visit the PTAB Litigation Blog.
The PTAB recently held that the General Plastic factors weighed in favor of denying a follow-on IPR petition filed after the Patent Owner filed a preliminary response to an earlier petition challenging the same patent (U.S. Patent No. 8,690,330). See Metall Zug AG v. Carl Zeiss Meditec AG, IPR2020-01074, Paper 8 (P.T.A.B. Jan. 5, 2021). In the earlier proceeding, the PTAB denied the petitioner’s request to replace its filed petition with a 238 page “unabridged” petition because of the “unabridged” petition’s “extraordinary length.” Nearly four months after that denial, the petitioner filed four follow-on petitions challenging the claims of the ’330 Patent, including the petition in the IPR2020-01074 proceeding. The PTAB explained that “[s]tanding alone, the sheer number of petitions (five), taken together with Petitioner’s unexplained and significant delay in filing the four follow-on petitions supports an exercise of our discretionary denial powers.” IPR2020-01074, Paper 8 at 4. The PTAB then explained that its analysis of the seven General Plastic factors justified its discretionary denial of the follow-on petition, with emphasis on factors 1 and 3.