In Nvidia, the Board enumerated the following factors that it considers when exercising its discretion to denying institution of an IPR: (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 USC 316(a)(1) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. Nvidia Corp. v. Samsung Elec. Co., IPR2016-00134 (PTAB May 4, 2016). Applying these factors, the follow-on petitions were denied.
In its request for rehearing, the Petitioner argued the following: (a) Board ignored the overarching purpose of Section 6 of AIA; (b) Section 325(d) recognizes possibility of subsequent petitions; (c) section 325(d) controls over the more general statutory section 314(a); (d) denial of first-filed petition shouldn't be fatal where follow-on petitions attempt to cure a substantive and material defect in the first-filed; (e) Nvidia doesn't include a factor addressing patent owner's resources and PTAB erred in considering it. In finding the Petitioner's arguments as not persuasive, the expanded panel upheld the denial of follow-on petitions finding that the multiple, staggered petition filings were an inefficient use of the IPR process and the Board's resources, that six of the seven Nvidia factors weighed against institution, and that Petitioner failed to explain why a reasonably diligent search couldn't have uncovered the newly applied prior art or whether there were any changed circumstances that reasonably justified its new prior art searches and associated filing of follow-on petitions.