Expanded Panel Decision Voted Precedential

On the heels of the recent issuance of an expanded panel decision in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19), Section II.B.4.i.(here), the Patent Trial and Appeal Board (PTAB) has now designated this decision precedential.

This expanded panel decision explains that applying factors to evaluate the equities of permitting follow-on petitions in AIA proceedings is a proper exercise of the Board’s discretion under 35 U.S.C. § 314 and provides a non-exhaustive list of factors that the Board considers in evaluating follow-on petitions.

1. Whether the same petitioner previously filed a petition directed to the same claims of the same patent;

2. Whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it;

3. Whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition;

4. The length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition;

5. Whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent;

6. The finite resources of the Board; and

7. The requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.

The Federal Circuit recently analyzed agency guidance stemming from precedential PTAB decisions. The Court was divided as to adjudicatory rulemaking being APA compliant in In re Aqua Products. The sentiment of Judge Moore’s contingent (Moore, O’Malley & Newman) might impact the deference given to factors promulgated by Board decision (assuming the issue ever makes it beyond the appeal bar of 35 U.S.C. § 314(d) to the Court):

[P]recedential Board decisions are not subject to notice and comment. Precedential Board decisions are posted on the Board’s website and are not published in the Federal Register, and there is no opportunity for public comment prior to the designation as precedential. Finally, neither the authority to designate opinions as precedential nor the process for doing so is to be found in the statute; rather this agency grant of power to itself is articulated only in the agency’s own Standard Operating Procedures. Regardless of whether precedential Board decisions constitute formal agency adjudication, they are not subject to the same requirements as notice and comment rulemaking through regulation. Rulemaking through regulation is different from rulemaking through adjudication.

Scott A. McKeown is an author of the Patents Post Grant.