“Follow-On” Petitions Have Significant Hurdles to Overcome

The PTAB denied Petitioner’s request for rehearing of a decision declining to institute an IPR in Conopco Inc. dba Unilever v. The Proctor & Gamble Co., IPR2014-00628, Paper 23 (March 20, 2015). This was Unilever’s second petition against the same patent. See IPR2013-00510, Paper 2. The petition was denied in-part for raising “substantially the same prior art or argument” presented in the first petition. Paper 23 at 3 (citing 35 U.S.C. §325(d)).

In denying institution, the PTAB identified several factors: (1) Unilever’s second petition failed to address §325(d) or compare its prior art and arguments against the earlier petition; (2) while the second petition presented different prior art, it applied the same arguments for anticipation and obviousness; (3) some prior art in the second petition was previously considered by the Office during prosecution or in the first petition; and (4) Unilever failed to argue that the newly cited prior art “were unknown or unavailable” when the first petition was filed, leading to “a reasonable inference that those references were known and available” at the time. IPR2014-00628, Paper 21, at 5-6, 8, 10-11.

In denying rehearing, the PTAB argued that Unilever failed to show an abuse of discretion. IPR2014-00628, Paper 23, at 3. Unilever argued that the statutes and rules do not preclude a second petition; however, the PTAB noted that 35 U.S.C. §314 provides the discretion to deny the second petition. Paper 23 at 4. Specifically, the PTAB may, but not must, institute an IPR when a party demonstrates a reasonable likelihood to prevail. Paper 23 at 4.

Unilever also argued that PTAB should not have applied the “known or available” standard, arguing that petitioners should be able to file “follow-on” petitions to correct deficiencies noted by the PTAB. Paper 23 at 5. The PTAB found no rationale to support Unilever’s position, noting that it would “tax Board resources and force patent owners to defend multiple attacks.” Paper 23 at 5. Unilver further argued that the decision was an abuse of discretion because there were differences between the sets of prior art. Paper 23 at 6. The PTAB recognized these differences, but concluded that the art and arguments were nonetheless “substantially the same.” Paper 23 at 6.

This decision puts petitioners on notice that if they are considering a “follow-on” petition, they need to be able to address 35 U.S.C. §325(d) and compare the prior art and arguments between the petitions, explain how the prior art and arguments in the petitions are not “substantially the same,” and explain how the newly cited art was not previously “known or available.” Otherwise, there is a risk that the petition will be rejected, despite the merits of the arguments.