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.
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.’”
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. Unilever also requested an expanded panel that included the Chief Judge for the rehearing.
In rejecting Unilever’s argument that the Board lacked authority to deny the second petition, the Board pointed to the discretion granted to it under § 325 to reject petitions that raise “’the same or substantially the same prior art or argument previously  presented to the Office.’” The Board also suggested that institution of IPR is discretionary, even if the petition establishes a reasonable likelihood of success with respect to at least one claim, citing 35 U.S.C. § 314(a).
The Board rejected Unilever’s argument that the Board improperly applied estoppel considerations. The Board concluded that Unilever did not articulate a rational basis for precluding the Board from considering whether Unilever could have advanced the positions set forth in its second petition in the first petition. The Board also suggested that it is within its discretion to reject “follow-on” petitions intended to correct deficiencies in a prior petition. The Board suggested that applying estoppel considerations would promote efficient use of the Board’s resources and to prevent abuse of the inter partes review process.
The Board rejected Unilever’s argument that the Board’s conclusion that the second petition raised substantially the same arguments that were previously presented in the first petition was erroneous.
The Board also rejected Unilever’s request for an expanded panel, stating that the panel is not empowered to grant a request for panel expansion. The Chief Judge may expand a panel on a “suggestion” from a judge or panel.