UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CONOPCO, INC. dba UNILEVER
`Petitioner
`v.
`THE PROCTOR & GAMBLE COMPANY
`Patent Owner
`
`Case No. IPR2014-00507
`
`Patent 6,451,300
`
`PETITIONER’S REPLY IN SUPPORT OF ITS REQUEST FOR
`REHEARING BY AN EXPANDED PANEL INCLUDING THE CHIEF
`ADMINISTRATIVE PATENT JUDGE UNDER 37 C.F.R. § 42.71(c)-(d)
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CONOPCO, INC. dba UNILEVER
`Petitioner
`v.
`THE PROCTOR & GAMBLE COMPANY
`Patent Owner
`
`Case No. IPR2014-00507
`
`Patent 6,451,300
`
`PETITIONER’S REPLY IN SUPPORT OF ITS REQUEST FOR
`REHEARING BY AN EXPANDED PANEL INCLUDING THE CHIEF
`ADMINISTRATIVE PATENT JUDGE UNDER 37 C.F.R. § 42.71(c)-(d)
`
`
`
`Case No. IPR2014-00507
`
`Ample authority exists for Unilever’s request for rehearing by an expanded
`
`panel, and it should be granted. P&G’s suggestion that the discretionary nature of
`
`§ 325(d) analyses lead to varying decisions misses the point. Rather, the scope and
`
`parameters of § 325(d) analyses are inconsistent among panels. An expanded panel
`
`can address the important issue of whether and under what circumstances second
`
`petitions may be filed to correct alleged deficiencies in earlier petitions. P&G
`
`provides no conflicting authority for such a panel’s consideration, nor provides any
`
`basis for alleging Unilever’s fax to CAPJ was “improper.”
`
`I.
`
`Ample Authority Exists for an Expanded Panel
`
`Contrary to P&G’s contention as to a lack of authority for Unilever’s request
`
`(Resp. at 1-2), several PTAB decisions have been issued by an expanded panel. See,
`
`e.g., Zetec, Inc. v. Westinghouse Electric Co., LLC, IPR2014-00384, Paper 10;
`
`Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242, Paper 98; St. Jude Med.,
`
`Cardiology Div., Inc. v. Volcano Corp., IPR2013-00258, Paper 29. Moreover,
`
`Section III of the PTO’s February 12, 2009 Standard Operating Procedure 1,
`
`Revision 13 (“SOP”) specifically provides for an expanded panel. See Loral Space
`
`& Commc’ns, Inc. v. Viasat, Inc., IPR2014-00236 (Papers 8 and 9) (considering on
`
`the merits, a request for an expanded panel based on the SOP).
`
`P&G’s argument (Resp. at 2) that the SOP applies only to the BPAI or only
`
`to panels in “appeals and interferences,” —not the PTAB or IPR panels—is wrong.
`
`1
`
`
`
`Case No. IPR2014-00507
`
`The America Invents Act (AIA) established the PTAB via amendments to 35
`
`U.S.C. § 6, which expressly provides that references to BPAI such as in the SOP are
`
`“deemed to refer” to the PTAB. Similarly, because § 6 expanded the new PTAB’s
`
`responsibilities to encompass not only appeals and derivations (previously
`
`interferences), but also IPR proceedings, the SOP provisions apply equally to IPR
`
`proceedings. See id. § 6(b)(4). Finally, § 6(c) (post-AIA) states that IPR
`
`proceedings shall be heard by “at least 3 members of the Patent Trial and Appeal
`
`Board, who shall be designated by the Director.” This is essentially identical
`
`language as existed in the pre-AIA version of § 6(c), meaning § 6(c) grants the
`
`Office the same authority to establish expanded panels as the pre-AIA version.
`
`II.
`
`An Expanded Panel Is Justified in This Case
`
`The issue of whether a petition raises “the same or substantially the same”
`
`prior art or arguments remains highly problematic. Despite no statutory authority
`
`outside the express estoppel provision of 35 U.S.C. 315(e), at least some panel
`
`decisions effectively estop merits-based consideration of second petitions. P&G’s
`
`response fails to rebut this argument, meriting attention from an expanded panel
`
`pursuant to SOP § III.A.1.
`
`P&G argues that because § 325(d) is discretionary, there is no inconsistency.
`
`Yet, decisions involving similar circumstances that do not lead to similar outcomes
`
`amount to an abuse of discretion. For example, in IPR2013-00581, where similar
`
`2
`
`
`
`Case No. IPR2014-00507
`
`prior art and arguments were raised in a second petition, the panel only dismissed
`
`grounds under § 325(d) that involved claims as to which an IPR had already been
`
`instituted (see Paper 15 at 20-22), while analyzing the other grounds on their merits
`
`(id. at 9-20). This and other decisions (see Petitioner’s Request for Rehearing at
`
`6-7, IPR2014-00507 (Paper 19)) demonstrate that panels are exercising their
`
`discretion under § 325(d) inconsistently and arbitrarily, thereby justifying an
`
`expanded panel for rehearing pursuant to SOP § III.A.2.
`
`III. Unilever’s Fax Was in No Way “Improper”
`
`Citing no authority, P&G claims it was “improper” for Unilever to fax a
`
`courtesy copy of its request to the CAPJ. Such fax, which admittedly “did not seek
`
`any particular relief” was however consistent with SOP § III.F (explaining that
`
`expanded panels will generally include the CAPJ). P&G likewise fails to mention
`
`that it was served a copy of the exact fax consistent with 37 CFR § 41.3 (“petitions”
`
`must be addressed to CAPJ) as well as 37 CFR § 10.93(b)(2) (official commun-
`
`ications must be “promptly delivered” to opposing counsel). Unilever submits that
`
`it acted within the spirit of the rules and is unaware of any authority prohibiting its
`
`course of action. In any event, P&G’s requested remedy that the fax be “destroyed”
`
`and not considered by the CAPJ is moot. On August 14, 2014, the Office indicated
`
`that the CAPJ was aware of the filing, and the faxed paper copy would be discard-
`
`ed. The CAPJ should consider Unilever’s request pursuant to SOP § III.A and III.F.
`
`3
`
`
`
`Date: August 29, 2014
`
`Edward A. Squillante, Jr.
`Reg. No. 38,319
`Ronald Koatz
`Reg. No. 31,774
`Conopco Inc. dba Unilever
`
`Case No. IPR2014-00507
`
`Respectfully submitted,
`
`By:
`
`Jeanne M. Gills
`Reg. No. 44,458
`Joseph P. Meara
`Reg. No. 44,932
`Michael R. Houston
`Reg. No. 58,486
`Foley & Lardner LLP
`
`Counsel for Petitioner
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that a true and correct copy of the foregoing
`
`PETITIONER’S REPLY IN SUPPORT OF ITS REQUEST FOR
`
`REHEARING BY AN EXPANDED PANEL INCLUDING THE CHIEF
`
`ADMINISTRATIVE PATENT JUDGE UNDER 37 C.F.R. § 42.71(c)-(d) is
`
`being served by electronic mail this 29th day of August, 2014 on counsel for
`
`Patent Owner as follows:
`
`David M. Maiorana
`John V. Biernacki
`Michael S. Weinstein
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114
`Telephone (216) 586-3939
`Facsimile (216) 579-0212
`dmaiorana@jonesday.com
`jvbiernacki@jonesday.com
`msweinstein@jonesday.com
`
`Steven W. Miller
`Kim W. Zerby
`Carl J. Roof
`Angela K. Haughey
`THE PROCTOR &
`GAMBLE COMPANY
`299 E. Sixth Street
`Cincinnati, Ohio 45202
`Telephone (513) 983-1246
`Facsimile (513) 945-2729
`miller.sw@pg.com
`zerby.kw@pg.com
`roof.cj@pg.com
`haughey.a@pg.com
`
`Dated: August 29, 2014
`
`By:
`
`Respectfully submitted,
`
`/Joseph P. Meara/
`Joseph P. Meara
`Reg. No. 44,932
`Foley & Lardner LLP
`Counsel for Petitioner
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
