UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`CONOPCO, INC. d/b/a UNILEVER
`Petitioner
`
`v.
`
`THE PROCTER & GAMBLE COMPANY
`Patent Owner
`
`_________________________
`
`Case IPR2014-00507
`Patent 6,451,300
`__________________________
`
`
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S
`REQUEST FOR REHEARING BY AN EXPANDED PANEL
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`_________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`CONOPCO, INC. d/b/a UNILEVER
`Petitioner
`
`v.
`
`THE PROCTER & GAMBLE COMPANY
`Patent Owner
`
`_________________________
`
`Case IPR2014-00507
`Patent 6,451,300
`__________________________
`
`
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S
`REQUEST FOR REHEARING BY AN EXPANDED PANEL
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`Case IPR2014-00507
`Patent 6,451,300
`Having lost in its latest attempt to initiate inter partes review of certain
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`claims of U.S. Patent No. 6,451,300, Unilever now seeks rehearing by an expanded
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`panel. The Board should deny Unilever’s request because there is no authority for
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`expanded panel review of an inter partes review decision under the America
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`Invents Act (“AIA”). In any event, Unilever fails to raise any issue that merits
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`review by an expanded panel. Finally, Unilever’s fax to the Chief Administrative
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`Patent Judge (“CAPJ”) was an improper communication and should be disregarded.
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`I.
`
`ARGUMENT
`
`There is no basis for Unilever’s request for an expanded panel. Although
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`Unilever points to the February 12, 2009 Standard Operating Procedure 1
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`(Revision 13) (“SOP”) of the Board of Patent Appeals and Interferences (“BPAI”),
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`Unilever provides no legal authority to support its assertion that this five-year-old
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`SOP applies to proceedings under the AIA. In the absence of any such authority,
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`the Board must decline Unilever’s improper request to extend the BPAI’s
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`expanded panel review provisions to rehearing of an IPR under the AIA.1
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`Unilever assumes, without support, that the 2009 SOP applies to IPRs, but
`
`
`1 Unilever quotes 37 C.F.R. § 42.71(c), but that rule simply says “When
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`rehearing a decision on petition, a panel will review the decision for an abuse of
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`discretion.” The rule says nothing about expanded panels.
`
`
`
`1
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`
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`Case IPR2014-00507
`Patent 6,451,300
`Unilever is wrong. By its express terms, the SOP applies only to the BPAI. The
`
`BPAI adopted the SOP more than two years before President Obama signed the
`
`AIA into law, and the PTAB has taken no further administrative action or given
`
`any indication that the 2009 SOP applies to IPR proceedings. Further, the SOP
`
`expressly applies only to “the assignment of Administrative Patent Judges (judges)
`
`to merits panels, motions panels, and expanded panels in appeals and
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`interferences.” (emphasis added). Without an SOP specifically authorizing
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`expanded panel review of IPR decisions, this panel has no authority to grant
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`Unilever’s request.
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`Even if this panel were to conclude that the 2009 SOP applies to IPRs,
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`Unilever fails to show that an expanded panel is warranted. Unilever relies on only
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`Section III(A)(2) of the SOP, which provides that a panel may be expanded to
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`address “[c]onflicting decisions by different panels of the Board.” Request at 5.
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`Unilever points to prior IPR decisions that allegedly provide what it calls
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`“inconsistent analyses” under Section 325(d). Id. at 6-7. Unilever’s arguments
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`fail.
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`Section 325(d) provides that in determining whether to institute a
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`proceeding, the Board “may take into account whether, and reject the petition or
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`request because, the same or substantially the same prior art or arguments
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`previously were presented to the office.” The provision is discretionary. It gives
`
`
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`2
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`
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`Case IPR2014-00507
`Patent 6,451,300
`the Board the authority not to institute review, but it does not require that result.
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`See IPR2013-00100, Paper 8 at 20.
`
`In light of Section 325(d)’s discretionary standard, the decisions Unilever
`
`cites do not conflict with each other or with this panel’s decision. IPRs 2013-
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`00368 and 2013-00100 dealt with the application of Section 325(d) to prior art
`
`cited and/or arguments made during ex parte prosecution. Indeed, in IPR2013-
`
`00100, the panel distinguished the IPR proceeding from the ex parte prosecution
`
`proceeding, and noted that the petitioner presented different arguments that were
`
`not before the examiner. In IPR2013-00581, the panel rejected certain grounds of
`
`a second-filed petition because they presented “substantially the same prior art and
`
`arguments previously presented.” Paper 15 at 21-22.
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`Here, the panel undertook the same discretionary review as did the panels in
`
`the proceedings Unilever cites, and based on the facts and evidence presented, this
`
`panel rejected the second petition because it presented “substantially the same”
`
`prior art and arguments. Decision at 6. Because every IPR proceeding will have
`
`unique facts, just because panels may reach different results in other proceedings
`
`does not mean that the decisions are conflicting. Nor are the decisions conflicting
`
`because some panels chose to address the merits of the grounds in the Institution
`
`Decision, while others only discussed Section 325(d), as Unilever argues. See
`
`Request at 6-8. Every case is different. Unilever’s dissatisfaction with the
`
`
`
`3
`
`
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`Case IPR2014-00507
`Patent 6,451,300
`outcome in this proceeding is not a justification to declare it “conflicting” with
`
`other IPR proceedings in which the panels decided differently. Expanded panel
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`review is not warranted.
`
`Unilever further argues that “[t]his case presents an opportunity to set clear
`
`guidelines on what qualifies as the ‘same or substantially the same’ prior art and/or
`
`arguments, and the appropriate factors for a § 325(d) analysis.” Request at 5. This
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`panel should decline such an invitation. A determination under Section 325(d)
`
`involves a close comparison of the particular prior art combinations and arguments
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`of record in the two proceedings. Trying to create particular “guidelines” or
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`“factors” to govern a Section 325(d) analysis makes little sense in light of the
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`heavily fact-dependent nature of the inquiry.
`
`Unilever also argues that rehearing by an expanded panel is warranted to
`
`address “whether and to what extent a proposed obviousness combination that
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`relies on both a new and a previously-cited reference can serve as a basis for
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`rejection under § 325(d)…” Request at 7. Even if this question was appropriate
`
`for consideration by an expanded panel, which P&G does not concede, this case is
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`not the proper vehicle. Unilever mischaracterizes the panel’s decision in this case
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`as a “summary dismissal,” arguing that the panel rejected the petition because it
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`was based on a previously cited reference in view of other prior art, and the panel
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`“declined to consider what the ‘other prior art’ taught.” Request at 7. Contrary to
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`
`
`4
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`
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`Case IPR2014-00507
`Patent 6,451,300
`Unilever’s mischaracterization, the panel expressly stated that it “considered all of
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`the papers filed in both proceedings” in making its decision to reject the petition.
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`Decision at 7.
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`Finally, Unilever argues that the decision “precludes a petitioner in most
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`cases from ever filing a second petition, regardless of its merits.” Request at 10.
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`Again, Unilever misconstrues the panel’s decision. Nothing in the decision
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`precludes a petitioner from filing a second petition. After considering all of the
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`evidence presented in both petitions, the panel properly exercised its discretion
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`under Section 325(d).
`
`Unilever’s August 7, 2014 fax of a service copy of its rehearing request was
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`an improper communication with the CAPJ. The CAPJ is not part of the panel
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`assigned to this IPR, and it was improper for Unilever to send him a “courtesy
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`copy” of its request. Further confirming that it was improper, the communication
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`did not seek any particular relief. It was not a petition, motion or any other type of
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`Board-recognized paper. The Board should not allow parties to communicate with
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`judges outside of the assigned panel. As a result of the improper communication,
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`the panel should order that the fax be destroyed and disregarded by the CAPJ.
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`II. CONCLUSION
`For all of the foregoing reasons, P&G respectfully requests that this panel
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`deny Unilever’s request for rehearing by an expanded panel.
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`
`
`
`
`5
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`
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`Dated: August 26, 2014
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`
`
`
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`
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`
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`Case IPR2014-00507
`Patent 6,451,300
`
`Respectfully submitted,
`
`
`/s/ David M. Maiorana
`David M. Maiorana (Reg. No. 41,449)
`John V. Biernacki (Reg. No. 40,511)
`Michael S. Weinstein (Reg. No. 62,446)
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`Tel: (216) 586-3939 / Fax: (216) 579-0212
`
`Steven W. Miller (Reg. No. 31,984)
`Kim W. Zerby (Reg. No. 32,323)
`Carl J. Roof (Reg. No. 37,708)
`Angela K. Haughey (Reg. No. 56,373)
`THE PROCTER & GAMBLE COMPANY
`299 E. Sixth Street, Cincinnati, Ohio 45202
`Tel: (513) 983-1100 / Fax: (513) 945-2729
`
`Attorneys For Patent Owner
`The Procter & Gamble Company
`
`6
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`
`
`Case IPR2014-00507
`Patent 6,451,300
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on August 26,
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`2014, a copy of the foregoing Patent Owner’s Response To Petitioner’s Request
`
`For Rehearing By An Expanded Panel, was served by electronic mail (per the
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`parties’ agreement), on the following counsel of record for Petitioner:
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`Joseph P. Meara, Esq.
`jmeara-PGP@foley.com
`FOLEY & LARDNER LLP
`150 E. Gilman Street, Suite 5000
`Madison, WI 53703
`
`
`
`
`
`
`
`
`Michael R. Houston, Esq.
`mhouston@foley.com
`Jeanne M. Gills, Esq.
`jmgills@foley.com
`FOLEY & LARDNER LLP
`321 North Clark Street, Suite 2800
`Chicago, IL 60654
`
`/s/ David M. Maiorana
`David M. Maiorana
`Registration No. 41,449
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`
`Attorney For Patent Owner
`The Procter & Gamble Company
`
`
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