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.
Summary (Informative) :
Petitioner Unilever, Inc. (“Unilever”) challenged U.S. Patent No. 6,974,569 B2 (“the ’569 Patent”) in two separate IPR petitions. The first petition challenged claims 1-33. The Board instituted IPR for claims 1-12, 15, 17-19, 23, 26, 28-30, and 32, and denied institution with respect to the remaining claims. Unilever subsequently filed a second petition challenging the claims of the ’569 Patent that were denied institution. Six of the thirteen prior art references in the second petition were previously raised in the first petition, and each ground presented in the second petition relied on at least one prior art reference that had been presented in the first petition.
The Board expressly exercised its discretion under 35 U.S.C. § 325(d) and denied review, declaring that “we already have considered the same or substantially the same prior art or arguments in connection with the challenged claims” in the first petition. The Board found that “the instant Petition uses our prior Decision on Institution to bolster challenges that were advanced, unsuccessfully, in the [first petition].” The Board criticized Unilever for presenting no argument or evidence that the seven newly presented references were not known or available to it when it filed the first petition. The Board also cited examples illustrating overlap between the petitions – one example where the second petition simply substituted a secondary reference for the one that was presented in the first petition for the same purpose (to satisfy a single element of a dependent claim that was not met by the primary reference) and another example where the second petition unpersuasively attempted to augment the evidence of a reason to combine two prior art references previously presented in the first petition.