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2017 Pat. App. LEXIS 9839

Patent Trial and Appeal Board Representative Orders, Decisions, and Notices

September 06, 2017, Decided

Case IPR2016-01357 (Patent 9,046,820 B1) 1, Paper No. 19; Case IPR2016-01358 (Patent 9,046,820 B1); Case IPR2016-01359 (Patent 8,909,094 B2); Case IPR2016-01360 (Patent 8,909,094 B2); Case IPR2016-01361 (Patent 8,909,094 B2)

USPTO Bd of Patent Appeals & Interferences; Patent Trial & Appeal Bd Decs.


McSHANE, Administrative Patent Judge.


Denying Petitioner's Requests for Rehearing

37 C.F.R. § 42.71(d)


General Plastic Industrial Co., Ltd., (hereafter "Petitioner") filed respective Requests for Rehearing of each of the Decisions Denying Institution of inter partes  review in the following five related proceedings: (1) IPR2016-01357; (2) IPR2016-01358; (3) IPR2016-01359; (4) IPR2016-01360; and (5) IPR2016-01361. 2 In each Request for Rehearing, Petitioner contends that [*2]  the corresponding Decision Denying Institution should be withdrawn, and inter partes  review should be instituted. Also, in each Request for Rehearing, Petitioner requests that the panel on rehearing be expanded.

For purposes of this Decision on Rehearing, we treat the Request for Rehearing in IPR2016-01357 as representative, and specifically discuss the circumstances of that request. This discussion, however, equally applies to all the Requests for Rehearing. For ease of reference, unless otherwise indicated, all citations are to filings in IPR2016-01357, including the Request for Rehearing ("Req. Reh'g") and the Decision Denying Institution [*3]  ("Dec."). Where appropriate, we add specific discussions pertaining to the other proceedings.

To summarize, and as discussed further below, Petitioner filed a first set of petitions seeking inter partes  review of U.S. Patent No. 9,046,820 B1 ("the '820 patent") and U.S. Patent No. 8,909,094 B2 ("the '094 patent"). For each petition, institution of a trial was denied based upon the merits. Nine months after the filing of the first set of petitions, Petitioner filed follow-on petitions against the same patents. For each of those follow-on petitions, we exercised our discretion not to institute pursuant to 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a).

Petitioner alleges that trials should have been instituted on the follow-on petitions because a petitioner is not limited to filing just one petition per challenged patent under either 35 U.S.C. § 311 or § 314. Req. Reh'g 5. Petitioner also argues that we should not have relied on § 314(a), which, according [*4]  to Petitioner, does not apply to the later petitions, and that we should have performed our analysis under 35 U.S.C. § 325(d). Id. at 5-7, 13-14. Furthermore, Petitioner alleges that in our analysis, we misapplied the factors set forth in the Board's NVIDIA 3 decision. Specifically, Petitioner contends that: (1) the factor of the limited one-year time period for issuing a final written decision should be afforded additional, if not dispositive, weight in light of the legislative history; (2) we abused our discretion by requiring that the prior art "should have been known" at the time the initial petitions were filed; and (3) we erred in considering potential prejudice to Patent Owner because the NVIDIA decision does not list such a factor. Id. at 6-13. Petitioner also requests that an expanded panel be designated. Id. at 14-15.

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2017 Pat. App. LEXIS 9839 *


Notice: [*1] 

ROUTINE OPINION. Pursuant to the Patent Trial and Appeal Board Standard Operating Procedure 2, the opinion below has been designated a routine opinion.


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