§ 325(d) Used by the Board to Deny Petitions for Inter Partes Review

by Harness, Dickey & Pierce, PLC

iStock_000011114669SmallWe wrote last week about the Board’s willingness to come to a different conclusion than that of the original patent examiner on the adequacy of a 131 declaration. Further, we have discussed in the past how the Board has been more than willing to reconsider arguments and art that were previously before the Patent Office.

It is fair to point out, therefore, that the Board is sometimes willing to provide deference to previous decisions.  In Unilever, Inc. v. The Procter & Gamble Co., IPR2014-00506 and IPR2014-00507, the Board denied two petitions for inter partes review because substantially similar arguments were presented (and denied) in previous IPRs.

In the previous proceeding (IPR2013-00505), Unilever had challenged 33 claims of the patent-at-issue. The petition was denied as to several challenged claims of the patent-at-issue, and Unilever subsequently challenged the denied claims again in IPR2014-00506, following an unsuccessful Request for Rehearing. Unilever further requested joinder of the ‘506 proceeding with the much earlier ‘505 proceeding.

Pursuant to 35 U.S.C. § 325(d), the Board is permitted to deny petitions that raise substantially the same prior art or arguments previously presented to the Office. In applying the facts of the ‘506 proceeding to this statutory provision, the Board made several key observations:

(1) The later ‘506 proceeding challenged each of the claims that were denied review in the earlier ‘505 proceeding;
(2) The later ’506 proceeding involved thirteen pieces of prior art, six of which were also included in the ‘505 proceeding;
(3) Patent Owner provided no evidence or indication that the references that were new in the ’506 proceeding were not available at the time of the filing of the ‘505 proceeding;
(4) Nine of the thirteen grounds of unpatentability in the ’506 proceeding rely, at least in part, on references presented in the ‘505 proceeding; and
(5) There were several arguments in the ‘506 proceeding which mirrored the same deficient arguments of the ‘505 proceeding, with the only difference being reliance on new prior art which did not strengthen the deficient arguments.

Accordingly, based on these facts, the Board rejected the petition in the ‘506 proceeding as raising substantially the same prior art or arguments previously presented in the ‘505 proceeding, pursuant to 35 U.S.C. § 325(d).

The Board addressed nearly identical issues in IPR2014-00507. In a previous proceeding (IPR2014-00509), Unilever had previously challenged several claims of the ‘300 patent. The petition was denied as to several challenged claims of the ‘300 patent, and Unilever subsequently challenged these denied claims in IPR2014-00506 following an unsuccessful Request for Rehearing. Unilever further requested joinder of the ‘507 proceeding with the ‘509 proceeding.  Using a substantially similar analysis as that presented in the ’506 proceeding, the Board rejected the petition in the ‘507 proceeding as raising substantially the same prior art or arguments previously presented in the ‘509 proceeding under 35 U.S.C. § 325(d).

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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