Follow-On Petitions Must Be Justified and Timely, PTAB Litigation Blog

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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.

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