Conopco Inc v. The Procter & Gamble Co., Case IPR2014-00506 (Dec. 10, 2014) (Paper 25)

Takeaway (1): The Board has broad discretion under 35 U.S.C. §§ 314(a) and 325(d) to reject “follow-on” petitions intended to correct deficiencies in a prior petition. In determining whether to institute a petition filed by a petitioner who filed a prior petition challenging the same patent, the Board can consider whether any prior art or arguments raised in the petition at issue were known or available to the petitioner at the time of filing the first petition.
Takeaway (2): When considering a request for rehearing, the Board reviews its decision for an abuse of discretion, which may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. The party requesting rehearing bears the burden of showing that the decision should be modified, and “ʻ[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.’”

Takeaway (3): The members of the Board deciding an institution matter are not empowered to grant a request for panel expansion.

Click Here For Copy of Decision

Takeaway (1):

The Board has broad discretion under 35 U.S.C. §§ 314(a) and 325(d) to reject “follow-on” petitions intended to correct deficiencies in a prior petition. In determining whether to institute a petition filed by a petitioner who filed a prior petition challenging the same patent, the Board can consider whether any prior art or arguments raised in the petition at issue were known or available to the petitioner at the time of filing the first petition.

Takeaway (2):

When considering a request for rehearing, the Board reviews its decision for an abuse of discretion, which may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. The party requesting rehearing bears the burden of showing that the decision should be modified, and “ʻ[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.’”

Takeaway (3):

The members of the Board deciding an institution matter are not empowered to grant a request for panel expansion. Continue reading “Conopco Inc v. The Procter & Gamble Co., Case IPR2014-00506 (Dec. 10, 2014) (Paper 25)”

Medtronic, Inc. v. Nuvasive, Inc., Case IPR2014-00487 (Sept. 11, 2014) (Paper 8)

Takeaway: The Board has broad discretion under 35 U.S.C. §§ 314(a) and 325(d) to reject “follow-on” petitions intended to correct deficiencies in a prior petition.

Click Here For Copy of Decision

Takeaway:

The Board has broad discretion under 35 U.S.C. §§ 314(a) and 325(d) to reject “follow-on” petitions intended to correct deficiencies in a prior petition. Continue reading “Medtronic, Inc. v. Nuvasive, Inc., Case IPR2014-00487 (Sept. 11, 2014) (Paper 8)”

Unified Patents, Inc. v. PersonalWeb Technologies, LLC and Level3 Communications, LLC, Case IPR2014-00702 (July 24, 2014) (Paper 13)

Takeaway: The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously presented to the Office (such as in the context of prior third party IPR proceedings).

Click Here For Copy of Decision

Takeaway:

The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously presented to the Office (such as in the context of prior third party IPR proceedings). Continue reading “Unified Patents, Inc. v. PersonalWeb Technologies, LLC and Level3 Communications, LLC, Case IPR2014-00702 (July 24, 2014) (Paper 13)”

Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., Case IPR2014-00315 (July 8, 2014) (Paper 14)

Takeaway: The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously presented to the Office (such as in the context of the original prosecution of the patent at issue).

Click Here For Copy of Decision

Takeaway:

The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously presented to the Office (such as in the context of the original prosecution of the patent at issue). Continue reading “Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., Case IPR2014-00315 (July 8, 2014) (Paper 14)”

Unilever, Inc., v. The Procter & Gamble Co., Case IPR2014-00506 (July 7, 2014) (Paper 17)

Takeaway: The Board has broad discretion under 35 U.S.C. §§ 314(a) and 325(d) to reject “follow-on” petitions intended to correct deficiencies in a prior petition. In determining whether to institute a petition filed by a petitioner who filed a prior petition challenging the same patent, the Board can consider whether any prior art or arguments raised in the petition at issue were known or available to the petitioner at the time of filing the first petition.

Click Here For Copy of Decision

Takeaway:

The Board has broad discretion under 35 U.S.C. §§ 314(a) and 325(d) to reject “follow-on” petitions intended to correct deficiencies in a prior petition. In determining whether to institute a petition filed by a petitioner who filed a prior petition challenging the same patent, the Board can consider whether any prior art or arguments raised in the petition at issue were known or available to the petitioner at the time of filing the first petition. Continue reading “Unilever, Inc., v. The Procter & Gamble Co., Case IPR2014-00506 (July 7, 2014) (Paper 17)”