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

Note: These are decisions that the Board once deemed Informative or Precedential but, according to the Board, are no longer pertinent or are less pertinent to current Board practice.

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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 should 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.

Summary  (Informative) :

Petitioner Conopco dba Unilever (“Unilever”) challenged U.S. Patent No. 6,974,569 B2 (“the ’569 Patent”) in two separate IPR petitions, both of which were denied. Unilever requested a rehearing regarding the second denial.

In rejecting Unilever’s argument that the Board lacked authority to deny the second petition, the Board held that it is within its discretion to reject “follow-on” petitions. The Board pointed to the discretion granted to it under 35 U.S.C. § 325 to reject petitions that raise “’the same or substantially the same prior art or argument previously [] presented to the Office.’” The Board concluded that institution of IPR is discretionary even if a petition establishes a reasonable likelihood of success, citing 35 U.S.C. § 314(a).

Board concluded that, in determining whether to institute IPR for a follow-on petition, it is proper for the Board to consider whether any new prior art or argument raised in a follow-on petition was known or available to the petitioner when it filed its earlier petition. The Board suggested that such estoppel considerations relate to promoting the efficient use of the Board’s resources and preventing abuse of the IPR process.

The Board concluded that its original conclusion — that the second petition raised substantially the same arguments presented in the first petition — was  not erroneous.

The Board also rejected Unilever’s request for an expanded panel including the Chief Judge for the rehearing, stating that the panel is not empowered to grant a request for panel expansion. Rather, the Chief Judge decides whether or not to expand a panel.

Josh Hoggard

Josh Hoggard

Josh’s practice focuses on patent preparation and prosecution, opinions, and counseling. Josh assists with preparing and prosecuting patent applications in a wide range of technologies, such as superabrasive and superhard materials, drill bits and bearing apparatuses used in oil and gas exploration drilling systems, medical devices, and various other mechanical and electro-mechanical technologies. Josh also assists with intellectual property litigation and pre-litigation counseling.

Clint Conner

Clint Conner

Clint’s practice focuses on intellectual property with an emphasis on patent litigation, inter partes reviews, and patent enforcement strategies. Although he has remained focused on U.S. intellectual property law throughout his career, he brings an international perspective, having spent nearly five years representing companies in U.S. patent litigation while living and working in Tokyo. Before attending law school, Clint was an engineer for three years with Lucent Technologies’ Bell Labs (now Alcatel-Lucent).

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