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ARTICLE · 12 SEPTEMBER 2019

Strategic Decision To Forgo Expert Does Not Allow A "Second Bite"

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The PTAB recently denied petitioner's request for rehearing of a decision denying institution of inter partes review, rejecting the argument that the Board's

United StatesIntellectual Property
Emily J. Tait
Emily J. Tait
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The PTAB recently denied petitioner's request for rehearing of a decision denying institution of inter partes review, rejecting the argument that the Board's denial was based on an erroneous analysis of the "non-exhaustive" General Plastic factors. See Guest Tek Interactive Entertainment Ltd. v. Nomadix, Inc., Case IPR2018-01660 (Paper No. 10) (Aug. 8, 2019), op. at 2 (citing General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, slip op. at 16-17 (PTAB Sept. 6, 2017) (Paper 19) (precedential)). The Guide Tek decision reminds practitioners and petitioners that decisions and statements made during the inter partes review process can and will be used against them. Most notably, the decision warns that a petitioner's failure to appreciate the significance of known prior art at the time of a first IPR petition due to its decision to forgo an expert does not justify a second petition citing that art.

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