The recent designation of General Plastic Industrial Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017) to an informative decision has received attention because it places limits on follow-on petitions. A second factor in this decision, although no less important, is that General Plastics failed to show that “a reasonably diligent search could not have uncovered the newly applied prior art”. This is a clear example of the need for comprehensive search strategies.
In this case, the board highlighted factor number two set forth in NVIDIA (NVIDIA Corporation v. Samsung Electronics Co., LTD., case IPR2016-00134, PTAB May 4, 2016) as one of the key reasons for denying the request for rehearing; i.e., “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”.
While this standard has long been applied to follow-on petitions, an essential element in this case is that the board highlighted that “the Petitioner provided no explanation in its Petition, or in its Reply to Patent Owner’s Preliminary Response, of any unexpected circumstances that prompted the new prior art searches, or for the delay in performing them”. This point by the board means that petitioners will have to be able to explain why any new searches for prior art are conducted or have reasoning behind why they waited to search until after filing the initial IPR.
The case states that the “Petitioner had modified its challenges in the follow-on petitions in an attempt to resolve deficiencies that the Board identified in its first-filed petitions”. In addition, the “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”.
This case illustrates the need to incorporate comprehensive search techniques into your strategy before filing an IPR. The InnovationQ platform allows you to search a global database of patent and non-patent literature (NPL) utilizing a combination of search techniques including semantic and Boolean text filters. This method provides robust results – you will be confident that you have performed a comprehensive search and will not have to justify the need for subsequent searches.
Written by Devin Salmon, Patent Analyst, IP.com