Takeaway: The Board has discretion to deny institution when the art or arguments raised in a second petition for inter partes review are substantially the same as in a first petition and may consider whether any new prior art or arguments raised in the second petition were known or available to the petitioner at the time of filing the first petition.

In its Decision, the Board denied Petitioner’s request for rehearing of its decision declining to institute inter partes review of claims 13-14, 16, 20-22, 24-25, 27, 31, and 33 of U.S. Patent No. 6,974,569 B2 and also denied its request for panel expansion.

When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.”

Petitioner filed a second petition for inter partes review of the challenged claims of the ’569 patent after the Board denied a first petition. The Board denied the second petition because it raised “substantially the same prior art or argument” that Petitioner “previously presented” in the first petition. Petitioner contended that the Board (1) lacked statutory authority to deny the second petition; (2) impermissibly applied estoppel considerations in exercising its discretion to deny review; and (3) erroneously precluded a second petition that raised improved, new prior art and arguments.

The Board began by considering Petitioner’s argument that it lacked statutory authority to deny the second petition. Petitioner argued that “[n]othing in the statutory framework or rules governing inter partes reviews suggests that a petitioner is barred from filing a second, follow-on petition that expressly attempts to correct deficiencies noted in a first petition.” In response, the Board stated that it “assessed the particular facts surrounding [Petitioner’s] second petition, and exercised our discretion to deny it under the circumstances.” The Board further stated that “Congress did not mandate that the Director, and by extension the Board, must institute an inter partes review whenever a petitioner establishes a reasonable likelihood of prevailing with respect to at least one challenged claim. Congress provided that the Director may, but not must, institute a proceeding when that condition is met.” Accordingly, the Board determined that Petitioner failed to show that it lacked statutory authority to deny the second petition.

The Board next considered Petitioner’s argument that the Board “improperly applied estoppel considerations” and that “the Board should not have considered whether any new prior art or arguments raised in the second petition were known or available to [Petitioner] at the time of filing the first petition.” The Board concluded that Petitioner did “not articulate a rational basis for precluding the Board from considering that factor within the statutory framework” and was “not persuaded that consideration of that factor amounted to an abuse of discretion.” The Board characterized Petitioner’s argument as seeking “a bright-line approach that would allow petitioners to file ‘follow-on ‘petitions [that] would allow petitioners to unveil strategically their best prior art and arguments in serial petitions, using [the Board’s] decisions on institution as a roadmap, until a ground is advanced that results in a review.” Thus the Board was “not persuaded that [it] erred” in adopting an approach that it characterized as “a more flexible approach that assesses each case on its particular facts to achieve a result that promotes the efficient and economical use of Board and party resources, and reduces the opportunity for abuse of the process.”

The Board then considered whether it abused its discretion in determining that the two petitions raised substantially the same prior art or arguments. Petitioner pointed out differences between the art and arguments raised in the two petitions; however, the Board stated that it “did not overlook those differences” but instead found that the art and arguments were “substantially the same.”

Finally, the Board rejected Petitioner’s request for panel expansion. It concluded that the members of the panel were not authorized to select other Board members to decide the matter and that the Standard Operating Procedure that permits the Chief Judge to expand a panel on suggestion from a judge or panel “does not create any legally enforceable rights.”

Conopco, Inc. dba Unilever v. The Procter & Gamble Co., IPR2014-00506
Paper 25: Decision Denying Petitioner’s Request for Rehearing and Panel Expansion
Dated: December 10, 2014
Before: Lora M. Green, Grace Karaffa Obermann, and Rama G. Elluru
Written by: Obermann
Related Proceeding: IPR2013-00505