Unilever, Inc., v. The Procter & Gamble Co., Case IPR2014-00506 (July 7, 2014) (Paper 17)
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.
The Board has broad discretion to deny “follow-on” petitions.
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 together with a motion for joiner requesting that the second petition be joined with the pending IPR.
The Board exercised its discretion under 35 U.S.C. § 325(d) and denied the second petition, 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 observed that 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 also 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 concluded that the arguments in the two petitions were substantially the same. The Board cited examples illustrating overlap between the petitions – one example where the second petition simply substituted secondary references for 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 attempted to augment the evidence of a reason to combine two prior art references presented as a combination in the first petition. The Board observed that “the instant Petition uses our prior Decision on Institution to bolster challenges that were advanced, unsuccessfully, in the [first petition].”