For months, panels at the PTAB have debated the relevance of parallel district court litigation on the PTAB’s discretion under 35 U.S.C. § 314(a) to institute or deny a petition for IPR. On May 7, 2019, the PTAB designated as precedential the NHK Spring Co. v. Intri-Plex Techs. decision that denied institution under § 325(d) and § 314(a), confirming that district court litigation “nearing its final stages” is indeed one relevant factor in deciding whether to institute an IPR.
In the 2017 precedential decision General Plastic Co. v. Canon Kabushiki Kaisha, the PTAB established a set of seven non-exclusive factors that it will consider in exercising its discretion under 35 U.S.C. § 314(a) to deny follow-on petitions. Two recent PTAB decisions analyzing General Plastic suggest a lack of redundancy between the petitions may not be enough to justify instituting a follow-on petition. Instead, a primary consideration guiding the PTAB may be whether the petitioner could have raised the arguments in an earlier-filed petition.