PTAB Finds SAS Decision Constrains Discretion In Follow-On Petitions, PTAB Litigation Blog

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The PTAB has discretion to deny "follow-on" petitions that challenge the validity of a patent that has been previously subjected to inter partes review. See 35 U.S.C. § 314(a); Gen. Plastic Indus. Co. Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19) (providing list of factors to consider in evaluating follow-on petitions). After the Supreme Court’s decision in SAS Institute Inc. v. Iancu, however, that discretion may be constrained when the earlier petitions involve less than all of the challenged claims. See Hulu, LLC v. Sound View Innovations, LLC, IPR2018-00366 (PTAB July 6, 2018) (Paper 11).

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