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

Takeaway (1): The Board has broad discretion to deny “follow-on” petitions. In deciding whether to institute a petition filed by a petitioner who filed a prior petition challenging the same patent, the Board may consider whether prior art or argument raised in the follow-on petition was known or available to the petitioner at the time it filed 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 to deny “follow-on” petitions. In deciding whether to institute a petition filed by a petitioner who filed a prior petition challenging the same patent, the Board may consider whether prior art or argument raised in the follow-on petition was known or available to the petitioner at the time it filed 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)”

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited, Case IPR2013-00324 (Nov. 21, 2013) (Paper 19)

Takeaway: The Board has broad discretion to deny “follow-on” petitions. The Board will not institute a follow-on petition that presents “the same or substantially the same prior art or argument” as a first petition by the same petitioner simply because the follow-on petition relies on a new prior art reference that the petitioner discovered only after filing the first petition.

Click Here For Copy of Decision

Takeaway:

The Board has broad discretion to deny “follow-on” petitions.  The Board will not institute a follow-on petition that presents “the same or substantially the same prior art or argument” as a first petition by the same petitioner simply because the follow-on petition relies on a new prior art reference that the petitioner discovered only after filing the first petition.
Continue reading “Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited, Case IPR2013-00324 (Nov. 21, 2013) (Paper 19)”