PTAB: We Are Disinclined to Acquiesce to Your Rehearing Request - Conopco Inc. dba Unilever, v. The Procter & Gamble Company

by McDermott Will & Emery
Contact

In a decision denying rehearing of the order denying institution of an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) explained the factors it considers in making institution decisions based on serial petitions.  In doing so, the Board made it clear that a petitioner advancing the same or substantially the same prior art or arguments previously before the Office should expect the Board to exercise its discretion under § 325(d) to not institute.  Conopco Inc. dba Unilever, v. The Procter & Gamble Company, Case IPR2014-00628, (PTAB Mar. 20, 2015) (Obermann, APJ.).

The petitioner, Unilever, requested rehearing of the Board’s decision denying institution of IPR review.  Unilever asked for an expanded panel, including the Chief Administrative Patent Judge, to rehear the matter.  Unilever made four arguments for rehearing: that the Board had misapplied § 325(d) and its provisions regarding denying institution based on the same or substantially the same prior art or arguments previously before the Office; that the prior art relied on by the second petition was not substantially the same as that relied on in its first petition; that the Board applied improper estoppel considerations, and that there is no statute, rule or policy basis justifying what is essentially a rule precluding a petitioner from filing a second, improved petition. In the rehearing decision, the Board rejected each of these arguments.

The Board explained that its authority for deciding whether to grant institution is grounded not only in § 325(d), but also in the broader discretion to deny a petition under § 314(a). The latter statue expressly states that “the Director may, but not must, institute a review” even where a petitioner meets the required threshold, i.e., likelihood that a claim will be found invalid.

Revisiting its earlier analysis, the Board noted that a petition raising the same or substantially the same prior art or argument as previously before the U.S. Patent and Trademark Office was just one factor in its denial of institution.  Another was “the reasonable inference that new prior art references raised in the second petition . . . were known to Unilever when it filed the first petition.”  The Board noted that “a grant of review, under the particular circumstances presented here, would incentivize petitioners to hold back prior art for successive attacks, should a first petition be denied.” The Board also noted that “the sheer multiplicity of grounds asserted in each petition favors denying the second petition, in part, to protect P&G from multifarious challenges to the same patent claims.”

Addressing Unilever’s estoppel argument, the Board explained that petitioner had not articulated a rational basis for precluding the Board from considering whether any new arguments or prior art were known or available at the time of filing of the first petition and that the petitioner’s bright-line approach of automatically allowing follow-on petitions to correct deficiencies in the initial petition would “allow petitioners to unveil strategically their best prior art and arguments in serial petitions, using our decisions on institution as a roadmap, until a ground is advanced that results in review.” The Board underscored that such a practice “would tax Board resources, and force patent owners to defend multiple attacks.”

Finally, the Board explained that panel expansion was not something that the panel itself had authority to grant.

Practice Note:  This decision is a tutorial in how serial petitions should and should not be structured.  The Board took umbrage at the “sheer multiplicity” of invalidity grounds advanced in the serial petition.  To the extent possible, second petitions should be based on new prior art and arguments, and the prior art applied should be art that was not known by the petitioner at the time the first petition was filed.  Petitioners are also well advised to be selective as to the number of grounds of unpatentability asserted against the challenged claims.

Written by:

McDermott Will & Emery
Contact
more
less

McDermott Will & Emery on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.