Paper No. 15
`Trials@uspto.gov
`571-272-7822 Entered: September 6, 2017 
` 
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.,
`Petitioner,
`
`v.
`
`CANON KABUSHIKI KAISHA,
`Patent Owner.
`____________
`
`Case IPR2016-01357 (Patent 9,046,820 B1)1
`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)
`____________
`
`
`
`Before DAVID P. RUSCHKE, Chief Administrative Patent Judge,
`SCOTT R. BOALICK, Deputy Chief Administrative Patent Judge, and
`JAMESON LEE, MICHAEL R. ZECHER, THOMAS L. GIANNETTI,
`JENNIFER S. BISK, and SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Requests for Rehearing
`37 C.F.R. § 42.71(d)
`
`                                                            
`1 These proceedings have not been joined or consolidated. Rather, because of the
`presence of common issues and the involvement of the same parties, we enter one
`Decision on Rehearing for these identified proceedings.
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`
`I. INTRODUCTION
`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 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`Decision Denying Institution should be withdrawn, and inter partes review should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 (“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
`
`                                                            
`2 The Decisions Denying Institution are listed as follows: IPR2016-01357 (Paper
`16); IPR2016-01358 (Paper 12); IPR2016-01359 (Paper 12); IPR2016-01360
`(Paper 12); and IPR2016-01361 (Paper 12). The Requests for Rehearing are listed
`as follows: IPR2016-01357 (Paper 17); IPR2016-01358 (Paper 13); IPR2016-
`01359 (Paper 13); IPR2016-01360 (Paper 13); and IPR2016-01361 (Paper 13).
`2
`
` 
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`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 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 NVIDIA3 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.  
`For the reasons that follow, we deny Petitioner’s Requests for Rehearing.
`
`
`                                                            
`3  NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134 (PTAB May 4, 2016)
`(Paper 9) (hereinafter, “NVIDIA”).
`
` 
`
`3
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`
`II. DISCUSSION
`A. Requests for an Expanded Panel
`Our governing statutes and regulations do not permit parties to request, or
`panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R.
`§§ 41.1–42.412; see also AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771,
`slip op. at 2 (PTAB Mar. 24, 2015) (Paper 12) (“[P]arties are not permitted to
`request, and panels do not authorize, panel expansion.”). Our standard operating
`procedures, however, provide the Chief Judge with discretion to expand a panel to
`include more than three judges. PTAB SOP 1, 1–3 (§§ II, III) (Rev. 14); see id. at
`1 (introductory language explaining that the Director has delegated to the Chief
`Judge the authority to designate panels under 35 U.S.C. § 6); see also In re
`Alappat, 33 F.3d 1526, 1532 (Fed. Cir. 1994) (providing that Congress “expressly
`granted the Commissioner the authority to designate expanded Board panels made
`up of more than three Board members.”). The Chief Judge may consider panel
`expansions upon a “suggestion” from a judge, panel, or party in a post-grant
`review. Id. at 3–4; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case
`IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded
`panel) (per curiam).
`The standard operating procedure exemplifies some of the reasons for which
`the Chief Judge may expand a panel. PTAB SOP 1, 3 (§ III.A). For example, an
`expanded panel may be appropriate when “[t]he proceeding or AIA Review
`involves an issue of exceptional importance.” Id. (§ III.A.1).
`In these cases, the Chief Judge has considered whether expansion is
`warranted, and has decided to expand the panel due to the exceptional nature of the
`
` 
`
`4
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`issues presented.4 As we discuss further below, follow-on petitions have been at
`issue in multiple cases before the Board. The Chief Judge has determined that an
`expanded panel is warranted to provide a discussion of factors that are considered
`in the exercise of the Board’s discretion under 35 U.S.C. § 314(a) and 37 C.F.R.
`§ 42.108(a).
`
`B. Requests for Rehearing
`A party requesting rehearing has the burden to show a decision should be
`
`modified by specifically identifying all matters the party believes were
`misapprehended or overlooked, and the place where each matter was addressed
`previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When
`rehearing a decision on institution, we review the decision for an abuse of
`discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is
`based on an erroneous interpretation of law, if a factual finding is not supported by
`substantial evidence, or if the decision represents an unreasonable judgment in
`weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277,
`1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir.
`2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
`
`We present background on the cases below, and then address the arguments
`made by Petitioner in the Requests for Rehearing.
`
`                                                            
`4 As provided for in the standard operating procedure, and considering the
`commonality of issues considered here, the Judges on the initial panels in all the
`cases at issue have been designated as part of the expanded panel, and the Chief
`Judge and Deputy Chief Judge have been added to the panel. PTAB SOP 1, 4
`(§ III.E).
`
` 
`
`5
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`
`1. Background
`Petitioner initially filed a first set of petitions challenging the ’820 patent
`
`and the ’094 patent. The ’820 and ’094 patents generally relate to toner supply
`containers used with image forming apparatuses, and the challenged claims at issue
`in both patents are very similar. Compare Ex. 1001, 24:6–61, with IPR2015-
`01954, Ex. 1001, 24:15–25:5. Below is a summary of the proceedings
`corresponding to the first set of petitions.
`’820 Patent Case
`Claims at Issue Prior Art Asserted
`1, 7–9, and 16 Matsuoka5
`
`Case
`IPR2015-01966
`(“First ’820 Patent Petition”)
`
`
`
`Case
`IPR2015-01954
`(“First ’094 Patent Petition”)
`
`’094 Patent Case
`Claims at Issue
`1, 7–9, 16–18, 29,
`and 38
`
`Prior Art Asserted
`Matsuoka
`
`Petitioner filed these two petitions (“first-filed petitions”) challenging claims
`
`of the ’820 and ’094 patents in September 2015. We denied institution of an inter
`partes review in those two proceedings based upon the merits of the challenges on
`March 9, 2016. Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, Case
`IPR2015-01966 (PTAB March 9, 2016) (Paper 9); Gen. Plastic Indus. Co., Ltd. v.
`Canon Kabushiki Kaisha, Case IPR2015-01954 (PTAB March 9, 2016) (Paper 9).
`
`                                                            
`5 U.S. Patent No. 5,903,806, issued May 11, 1999.
`
` 
`
`6
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`Petitioner filed Requests for Rehearing in those two proceedings, and those
`Requests were denied on May 19, 2016.
`
`In July 2016, Petitioner filed two follow-on petitions in Cases IPR2016-
`01357 and IPR2016-01358, again challenging claims of the ’820 patent, and three
`follow-on petitions in Cases IPR2016-01359, IPR2016-01360, and IPR2016-
`01361, again challenging claims of the ’094 patent. The five follow-on petitions,
`and their designation by Petitioner (“Second,” “Third,” and “Fourth”), are
`summarized below.
`
`Case
`
`IPR2016-01357
`(“Second ’820 Patent Petition”)
`IPR2016-01358
`(“Third ’820 Patent Petition”)
`
`Prior Art Asserted
`
`’820 Patent Case
`Claims at
`Issue
`1, 7–9, and 16 Suzuki6, Ikesue7, and
`Yasuda8
`1, 7–9, and 16 Yoshiki9, Koide10, Kato11,
`Matsuoka, and Ikesue
`
`
`
`                                                            
`6 Japan Patent Pub. No. 2000-305346, published November 2, 2000.
`7 U.S. Patent No. 5,598,254, issued January 28, 1997.
`8 U.S. Patent No. 5,481,344, issued January 2, 1996.
`9 U.S. Patent No. 5,765,079, issued June 9, 1998.
`10 Japan Patent App. No. H10-171230, published June 26, 1998.
`11 U.S. Patent No. 6,118,951, issued September 12, 2000.
`7
`
` 
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`
`Case
`
`IPR2016-01359
`(“Second ’094 Patent Petition”)
`IPR2016-01360
`(“Third ’094 Patent Petition”)
`IPR2016-01361
`(“Fourth ’094 Patent Petition”)
`
`’094 Patent Cases
`Claims at
`Issue
`1, 7–9, and 29
`
`Prior Art Asserted
`
`Suzuki and Ikesue
`
`1, 7–9, and 29 Yoshiki, Koide, Kato,
`Matsuoka, and Ikesue
`Yasuda
`
`1, 7–9, 11, 16–
`18, 29, and 38
`
`In Patent Owner’s Preliminary Responses to the follow-on petitions, Patent
`
`Owner argued that the Board should apply the factors set forth in the NVIDIA
`decision and deny the Petitions pursuant to 35 U.S.C. § 314(a). Paper 8, 4–10.
`Petitioner was granted leave to file Replies (Paper 10) to address issues arising
`under 35 U.S.C. §§ 314(a) and 325(d). Petitioner filed Replies to the Preliminary
`Responses (Paper 11) (“Reply”), and Patent Owner filed Sur-Replies in response to
`the Replies (Paper 13).
`
`2. Decisions Denying Institution
`We declined to institute inter partes reviews based on the follow-on
`
`petitions in Cases IPR2016-01357, IPR2016-01358, IPR2016-01359, IPR2016-
`01360, and IPR2016-01361 by exercising our discretion pursuant to 35 U.S.C.
`§ 314(a) and 37 C.F.R. § 42.108(a). See, e.g., Dec. 12; Gen. Plastic Indus. Co.,
`Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01360 (PTAB Nov. 14, 2016)
`(Paper 12) (hereinafter, “Dec. IPR2016-01360”).
`
`In exercising our discretion to deny each of the follow-on petitions, we
`considered seven factors, first set forth in NVIDIA, slip. op. at 6–7. In NVIDIA, the
`
` 
`
`8
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`Board determined that, when exercising discretion to deny institution of an inter
`partes review, we may consider the following factors:
`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;12
`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;13
`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
`
`                                                            
`12 See Conopco, Inc. v. Proctor & Gamble Co., Case IPR2014-00506, slip op. at 4
`(PTAB Dec. 10, 2014) (Paper 25) (informative) (hereinafter, “Conopco”), and slip
`op. at 6 (PTAB July 7, 2014) (Paper 17); Toyota Motor Corp. v. Cellport Sys., Inc.,
`Case IPR2015-01423, slip op. at 8 (PTAB Oct. 28, 2015) (Paper 7) (hereinafter,
`“Toyota Motor Corp.”).
`13 See Conopco, Inc. v. Proctor & Gamble Co., Case IPR2014-00628, slip op. at 11
`(PTAB October 20, 2014) (Paper 21) (discouraging filing of a first petition that
`holds back prior art for use in later attacks against the same patent if the first
`petition is denied); Toyota Motor Corp., slip op. at 8 (“[T]he opportunity to read
`Patent Owner’s Preliminary Response in IPR2015-00634, prior to filing the
`Petition here, is unjust.”).
`
` 
`
`9
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`
`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.
`See also LG Elecs. Inc. v. Core Wireless Licensing S.A.R.L., Case IPR2016-00986
`(PTAB Aug. 22, 2016) (Paper 12) (hereinafter, “LG Electronics”).
`
`Applying these factors to the follow-on petitions, we concluded that the
`circumstances did not warrant institution of inter partes reviews. See Dec. 11–12.
`For instance, when evaluating factor 1, we noted that the same claims of the same
`patent were at issue in the follow-on petitions as in the first-filed petitions, where
`institutions were denied. See id. at 7–8. We also considered the timing of the
`filings under factors 2 and 3. The follow-on petitions were all filed nine months
`after the filing of the first-filed petitions. At the time Petitioner filed the follow-on
`petitions, Patent Owner had filed its Preliminary Responses to the first-filed
`petitions, and the Board had issued Decisions Denying Institution of the first-filed
`petitions, as well as Decisions Denying Rehearing of those decisions. Id. at 10–12.
`Petitioner provided no meaningful explanation for the delay in filing the follow-on
`petitions. Instead, Petitioner stated that it had found new prior art as a result of two
`later searches. Id. at 8. The new prior art searches did not commence until after
`the Board issued the Decisions Denying Institution in the proceedings based on the
`first-filed petitions. Id. at 8–9 (citing Ex. 1010 ¶¶ 3, 4, 6–8). Additionally, with
`respect to factor 6, we found that the Board’s resources would be more fairly
`expended on initial petitions, rather than follow-on petitions. Dec. IPR2016-
`01360, 9.
`
`With respect to factors 4 and 5, Petitioner provided no explanation in its
`Petition or in its Reply to Patent Owner’s Preliminary Response of any unexpected
`
` 
`
`10
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`circumstances that prompted the new prior art searches, or for the delay. Dec. 11.
`Petitioner demonstrated that it found new prior art, but provided no explanation
`why it could not have found this new prior art earlier—prior to filing the first-filed
`petitions—through the exercise of reasonable diligence. Id.
`
`We additionally found that Petitioner had modified its challenges in the
`follow-on petitions in an attempt to cure the deficiencies that the Board identified
`in its first-filed petitions. See, e.g., Dec. 11–12 (“The shift in the prior art asserted
`and arguments in serial proceedings is of particular concern here.”). More
`specifically, the newly-asserted prior art, predominantly directed to toner cartridges
`only, “without resort to any copier components as part of its invalidity arguments,”
`was a shift in Petitioner’s positions and arguments from the first-filed petitions
`based on the analysis articulated in our Decisions Denying Institution of those
`petitions. Id. at 12. Moreover, the shift in Petitioner’s challenges was not the
`consequence of a position that Patent Owner surprisingly advanced or the Board
`surprisingly adopted, because “[t]he claims clearly require the sealing member to
`be a component of the toner supply container, e.g., a toner cartridge,” and not the
`copier itself. Dec. IPR2016-01360, 9. On these bases, we stated that “[t]he filing
`of sequential attacks against the same claims, with the opportunity to morph
`positions along the way, imposes inequities on [Patent Owner].” See Dec. 12.
`
`In light of the circumstances of these cases, and our assessment that the
`factors strongly favored non-institution, we exercised discretion and denied
`institution under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a). See id.
`
` 
`
`11
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`
`3. Petitioner’s Contentions
`Petitioner asserts that we were “overly concerned with the perceived burdens
`
`that would be imposed on the Patent Office and Patent Owner . . . , but ignored the
`overarching purpose of Section 6 of the America Invents Act (‘AIA’), 35 U.S.C.
`§ 311 et seq., which is to improve the quality of patents by cancelling unpatentable
`claims.” Req. Reh’g 2. More specifically, Petitioner asserts that, in rendering our
`Decisions Denying Institution, our actions were contrary to the legislative purpose
`of 35 U.S.C. § 314(a) and that we misapplied the factors set forth in NVIDIA,
`thereby creating an improper de facto bar against all follow-on petitions filed after
`a decision on a first-filed petition. Id. at 1–3, 6–14.
`
`Petitioner argues that it is not limited explicitly to filing just one petition per
`challenged patent under either 35 U.S.C. §§ 311 or 314, and that 35 U.S.C § 325(d)
`recognizes the possibility of subsequent petitions. Req. Reh’g 5–6. Petitioner
`further argues that § 325(d) only allows us to reject follow-on petitions when “the
`same or substantially the same prior art or arguments previously were presented to
`the Office” in the first-filed petition. Id. Petitioner asserts that utilizing § 314(a)
`and factors to prohibit shifting positions or arguments “conflicts with the express
`wording of § 325(d),” renders that statutory section superfluous or meaningless,
`and represents an abuse of discretion. Id. at 14.
`
`Petitioner contends that the more specific statutory section addressing
`multiple proceedings (i.e., § 325(d)) controls over the more general statutory
`section (i.e., § 314(a)). Req. Reh’g 14 (referring to HCSC-Laundry v. United
`States, 450 U.S. 1, 6 (1981)). Petitioner asserts that, upon reviewing the legislative
`history, the intent of Congress in giving the Director discretion to deny petitions
`
` 
`
`12
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`under § 314 is limited to providing a “safety valve” for situations where the one-
`year deadline imposed by 35 U.S.C. § 316(a)(11) could not be met. Id. at 6–7
`(citing A Guide to the Legislative History of the America Invents Act: Part II of II,
`21 Fed. Cir. B.J. 539, 610 (2012) (citing 157 CONG. REC. S1377 (daily ed. Mar. 8,
`2011))). Petitioner then argues that we should give more weight to factor 7, i.e.,
`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,
`than to the other factors we consider because that factor is the only factor
`“supported by the legislative history of §314(a).” Id. at 7. Petitioner further argues
`that we did not deny institution of the follow-on petitions in order to alleviate an
`existing backlog of instituted proceedings affecting the Board’s ability to meet a
`one-year deadline under § 316(a)(1). Id.
`
`Petitioner also argues that § 314(a) should not be applied here because its
`application “improperly conflicts with 35 U.S.C. § 325(d).” Id. at 13. According
`to Petitioner, the Board previously has applied “just § 325(d)” to determine
`whether institution should be granted for subsequent petitions. Id. at 13–14 (citing
`Microsoft Corp. v. Bradium Techs. LLC, Case IPR2016-00449, slip op. at 6–10
`(PTAB July 27, 2016) (Paper 9) (hereinafter, “Microsoft”); Atlas Copco Airpower
`N.V. v. Kaeser Kompressoren SE, Case IPR2015-01421, slip op. at 6–8 (PTAB
`Dec. 28, 2015) (Paper 8) (hereinafter, “Atlas”)).
`
`Petitioner further questions our findings on the reasonableness of its initial
`prior art search and argues that we abused our discretion because, under factor 2,
`we applied a standard based on whether the new prior art discovered by Petitioner
`“should have been known” earlier. Req. Reh’g 7–8. Petitioner argues that our
`
` 
`
`13
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`interpretation of factor 2 “would be self-defining to be adverse to Petitioners in
`every instance.” Id. at 8. Petitioner argues that because a petition requesting an
`inter partes review can be based only on “prior art consisting of patents or printed
`publications,” that “a reference must be locatable by a reasonably diligent search”
`“in order to qualify as such prior art.” Id. As a consequence, Petitioner asserts that
`any prior art citable in a second petition “necessarily could have been found by a
`reasonable prior art search performed prior to filing the first petition.” Id. (citing
`35 U.S.C. § 311(b); In re Lister, 583 F.3d 1307, 1311–12 (Fed. Cir. 2009)).
`
`Petitioner also argues that denial of a first-filed petition “should not be
`fatal.” Req. Reh’g 10. Petitioner argues we should not have denied its follow-on
`petitions that attempt to cure “a substantive and material defect” in its first-filed
`petitions, because that rationale “would apply to any second petition filed after the
`Board’s denial of the first petition.” Req. Reh’g 10–11. To illustrate this point,
`Petitioner refers to two other cases where the Board instituted an inter partes
`review on grounds asserted in follow-on petitions, even though the petitioners
`shifted positions in the follow-on petitions. Id. at 10–11 (citing Atlas, slip op. at 6,
`19; Microsoft, slip op. at 6–10). Petitioner further alleges that denial of the first-
`filed petitions was “surprising” to it because of our interpretation of “toner supply
`container,” that distinguished the prior art presented in the first-filed petitions—
`which disclosed a “combination copier-toner cartridge.” Id. at 11.
`
`Finally, Petitioner alleges that we erred in taking the “perceived unfair
`prejudice” to Patent Owner into account in our denial of the follow-on petitions
`because the NVIDIA decision does not include a factor addressing Patent Owner’s
`resources. Id. at 13. Instead, similar to its other arguments, Petitioner asserts that
`
` 
`
`14
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`any prejudice to Patent Owner is addressed by § 325(d), and that Patent Owner has
`not—and cannot show—that the follow-on petitions include the same or
`substantially the same prior art or arguments as the first-filed petitions. Id.
`4. Discussion
`For the reasons discussed below, Petitioner has not shown that our Decisions
`
`Denying Institution of inter partes review misapprehended or overlooked any
`matter or that we abused our discretion in reaching this determination.
`i. Applying Factors to Evaluate the Equities of Permitting Follow-on Petitions
`
`is a Proper Exercise of Discretion Under 35 U.S.C. § 314(a)
`The Director has discretion to institute an inter partes review under
`
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a). See 35 U.S.C. § 314(a) (stating
`“[t]he Director may not authorize an inter partes review to be instituted unless the
`Director determines that the information presented in the petition . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition” (emphasis added)); 37 C.F.R.
`§ 42.108(a) (stating “the Board may authorize the review to proceed on all or some
`of the challenged claims and on all or some of the grounds of unpatentability
`asserted for each claim” (emphasis added)). There is no per se rule precluding the
`filing of follow-on petitions after the Board’s denial of one or more first-filed
`petitions on the same patent. The Board consistently has considered a number of
`factors in determining whether to exercise that discretion. See NVIDIA, slip op. at
`6–8; LG Electronics at 6–7; see also Xactware Sols., Inc. v. Eagle View Techs.,
`
` 
`
`15
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`Inc., Case IPR2017-00034, slip op. at 7–8 (PTAB Apr. 13, 2017) (Paper 9). To
`reiterate, those factors are as follows:
`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.
`See NVIDIA, slip. op. at 6–7. Such a non-exhaustive list of factors informs
`practitioners and the public of the Board’s considerations in evaluating follow-on
`petitions.
`In exercising discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a),
`we are mindful of the goals of the AIA—namely, to improve patent quality and
`make the patent system more efficient by the use of post-grant review procedures.
`See H.R. Rep. No. 112-98, pt. 1, at 40 (2011). Although we recognize that an
`objective of the AIA is to provide an effective and efficient alternative to district
`
` 
`
`16
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358 (Patent 9,046,820 B1)
`IPR2016-01359 (Patent 8,909,094 B2)
`IPR2016-01360 (Patent 8,909,094 B2)
`IPR2016-01361 (Patent 8,909,094 B2)
` 
`court litigation, we also recognize the potential for abuse of the review process by
`repeated attacks on patents. See id. at 48 (“While this amendment is intended to
`remove current disincentives to current administrative processes, the changes made
`by it are not to be used as tools for harassment or a means to prevent market entry
`through repeated litigation and administrative attacks on the validity of a patent.
`Doing so would frustrate the purpose of the section as providing quick and cost
`effective alternatives to litigation.”).
`
`Our intent in formulating the factors was to take undue inequities and
`prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s
`potential benefit from receiving and having the opportunity to study Patent
`Owner’s Preliminary Response, as well as our institution decisions on the first-
`filed petitions, prior to its filing of follow-on petitions. As discussed in our
`Decisions Denying Institution, we are concerned here by the shifts in the prior art
`asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple,
`staggered petitions challenging the same patent and same claims raise the potential
`for abuse. The absence of any restrictions on follow-on petitions would allow
`petitioners the opportunity to strategically stage their prior art and arguments in
`multiple petitions, using our decisions as a roadmap, until a ground is found that
`results in the grant of review.14 All other factors aside, this is unfair to patent
`
`                                                            
`14 The Board has addressed efficiency and potential prejudice induced by multiple
`petitions in multiple cases. See LG Electronics, slip op. at 12 (“The Board’s
`resources would be more fairly expended on first petitions rather than on a follow-
`on petition like the Petition in this case.”); Butamax Advanced Biofuels LLC v.
`Gevo, Case IPR2014-00581, slip op. at 12–13 (PTAB Oct. 14, 2014) (Paper 8)
`(“[T]he four obviousness grounds are ‘second bites at the apple,’ which use our
`prior decision as a roadmap to remedy Butamax’s prior, deficient challenge.
`17
`
` 
`
`

`

`IPR2016-01357 (Patent 9,046,820 B1)
`IPR2016-01358