Conopco, Inc. dba Unilever v. the Procter & Gamble Co.

Paper 25, December 10, 2014

Case IPR2014-00506 (Patent 6,974,569 B2)

[In deciding on the request for rehearing, the Board reviews its decisions for abuse of discretion.

Party requesting the rehearing has the burden to show specific reasons as to why the decision should be modified.]

FACTS

Petitioner, Unilever, requested a rehearing of the denial of institution of an IPR by an expanded panel including the Chief Administrative Patent Judge. Petitioner asserted that the Board lacked statutory authority to deny their petition and that it improperly applied estoppel.

HOLDING

The Board denied the request for rehearing. The Board pointed out that in considering a request for rehearing, it reviews its decision for an abuse of discretion pursuant to 37 C.F.R. § 42.71(c). Further, pursuant to 37 C.F.R. § 42.71(d), the party requesting the rehearing bears the burden of showing that the decision should modified by specifically identifying all matters the party believes the Board  misapprehended. The Board noted that its decision to deny the institution of an IPR was based on its determination that the petition raised substantially the same prior art as a previously denied petition by Unilever challenging the same claims. The Board had the authority to reject petition on these grounds pursuant to 35 U.S.C. § 325(d).

The Board rejected the allegation of the improper application of the estoppel and held that Petitioner did not articulate any rational basis as to why the Board should not have considered whether prior art cited in the Petition was available to Unilever at the time it filed its first unsuccessful petition regarding the same claims. The Board also stated that it was within its discretion to determine whether prior art that was not identical to the one asserted in the previous petition was nevertheless substantially the same. This finding warranted application of the estoppel.

Finally, the Board clarified that pursuant to the Standard Operating Procedure (BPAI SOP 1 (Rev. 13) 2009, Sec. III(A)(2)), the Chief Judge may expand a panel on the suggestion from a judge or panel but that this procedure does not create any legally enforceable right or provide authority for the Board to grant panel expansion.

TAKEAWAY

In considering a request for rehearing, the Board reviews its decision for an abuse of discretion, and the party requesting a rehearing has the burden to show specific reasons as to why the decision should be modified.

The Board has the discretion to determine whether prior art is substantially similar to prior art cited in the previously denied petition and can deny the petition based on that determination.

The Board has no authority to expand the panel upon request from a petitioner.

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