Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 25
`Entered: December 10, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CONOPCO, INC. dba UNILEVER
`Petitioner,
`
`v.
`
`THE PROCTER & GAMBLE COMPANY
`Patent Owner.
`_______________
`
`Case IPR2014-00507
`Patent 6,451,300 B1
`_______________
`
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing and Panel Expansion
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 25
`Entered: December 10, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CONOPCO, INC. dba UNILEVER
`Petitioner,
`
`v.
`
`THE PROCTER & GAMBLE COMPANY
`Patent Owner.
`_______________
`
`Case IPR2014-00507
`Patent 6,451,300 B1
`_______________
`
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing and Panel Expansion
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`IPR2014-00507
`Patent 6, 451,300 B1
`
`
`
`Petitioner, Conopco dba Unilever (“Unilever”), requests a rehearing of the
`
`Decision on Institution (Paper 17, “Dec.”) by an expanded panel that includes the
`
`Chief Administrative Patent Judge (“Chief Judge”).1 Paper 19, “Rehearing Req.”
`
`Specifically, Unilever seeks rehearing of our decision declining to institute an inter
`
`partes review of claims 6–10, 14, 15, and 21–23 of U.S. Patent No. 6,451,300 B1
`
`(Ex. 1001, “the ’300 patent”). Paper 17.
`
`At the parties’ request, we authorized additional briefing, limited to whether
`
`(1) the request for panel expansion is warranted; and (2) Unilever’s service of a
`
`facsimile copy of the rehearing request on the Chief Judge is improper, and if so,
`
`what relief is appropriate. Paper 20 (“Order”); Paper 22 (“Opp.”); Paper 23
`
`(“Reply”). Patent Owner, Procter & Gamble Company (“P&G”), argues that
`
`“[t]here is no basis for Unilver’s request for an expanded panel” and, further, that
`
`service was improper, and asks “that the fax be destroyed and disregarded by the”
`
`Chief Judge. Opp. 1, 5.
`
`For the reasons that follow, we deny Unilever’s request for rehearing and
`
`panel expansion. We dismiss as moot P&G’s request for relief based on improper
`
`service on the Chief Judge.
`
`ANALYSIS
`
`When considering a request for rehearing, the Board reviews its decision for
`
`an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if
`
`the decision is based on an erroneous interpretation of law, if a factual finding is
`
`not supported by substantial evidence, or if an unreasonable judgment is made in
`
`
`1 Unilever filed a substantially identical request for rehearing and panel expansion
`in IPR2014-00506 (Paper 19), which involves the same parties. Concurrently
`herewith, we issue a decision on that request.
`
` 2
`
`
`
`
`
`
`
`IPR2014-00507
`Patent 6, 451,300 B1
`
`
`
`weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed.
`
`Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
`
`Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). The party requesting rehearing
`
`bears the burden of showing that the decision should be modified, and “[t]he
`
`request must specifically identify all matters the party believes the Board
`
`misapprehended or overlooked.” 37 C.F.R. § 42.71(d).
`
`Unilever filed this second petition for inter partes review of the challenged
`
`claims of the ’300 patent after we denied the first petition. Paper 2 (“second
`
`petition”); IPR2013-00509, Paper 2 (“first petition”); Paper 17 (decision denying
`
`Unilever’s first petition). We denied the second petition because it raised
`
`“substantially the same prior art or argument” that was “previously presented” in
`
`the first petition. 35 U.S.C. § 325(d); see Dec. 5-8. Unilever contends that the
`
`Board (1) lacked statutory authority to deny the second petition; (2) impermissibly
`
`applied estoppel considerations in exercising its discretion to deny review; and (3)
`
`erroneously precluded a second petition that raised improved, new prior art and
`
`arguments. We address each of those contentions in turn, concluding with a
`
`discussion of Unilever’s request for panel expansion to include the Chief Judge.
`
`The Board Has Statutory Authority to Deny the Second Petition
`
`Unilever argues that “[n]othing in the statutory framework or rules
`
`governing inter partes reviews suggests that a petitioner is barred from filing a
`
`second, follow-on petition that expressly attempts to correct deficiencies noted in a
`
`first petition.” Rehearing Req. 10. The Board did not hold, however, that “a
`
`petitioner is barred from filing a second, follow-on petition.” Id. We assessed the
`
`particular facts presented in Unilever’s second petition, and exercised our
`
`discretion to deny it under the circumstances. Our authority to do so is grounded
`
` 3
`
`
`
`
`
`
`
`IPR2014-00507
`Patent 6, 451,300 B1
`
`
`
`in our governing statute, which allows the Board to “reject [a] petition” that raises
`
`“the same or substantially the same prior art or argument previously [] presented to
`
`the Office.” 35 U.S.C. § 325(d).
`
`Congress did not mandate that the Director, and by extension the Board,
`
`must institute an inter partes review whenever a petitioner establishes a reasonable
`
`likelihood of prevailing with respect to at least one challenged claim. Congress
`
`provided that the Director may, but not must, institute a proceeding when that
`
`condition is met. 35 U.S.C. § 314(a) (institution of review is discretionary, not
`
`mandatory). On this record, Unilever fails to show that the Board lacked statutory
`
`authority to deny the second petition.
`
`The Board Did Not Improperly Apply Estoppel Considerations
`
`Unilever contends that the Board improperly applied estoppel considerations
`
`as part of the analysis supporting the decision to decline review. Rehearing Req. 9.
`
`Specifically, Unilever argues that the Board should not have considered whether
`
`any new prior art or arguments raised in the second petition were known or
`
`available to Unilever at the time of filing the first petition. Id. Unilever does not
`
`articulate a rational basis for precluding the Board from considering that factor
`
`within the statutory framework. Id. On this record, we are not persuaded that
`
`consideration of that factor amounted to an abuse of discretion.
`
`Unilever advances a bright-line approach that would allow petitioners to file
`
`“follow-on” second petitions in order to “correct deficiencies noted” by the Board
`
`in decisions that deny a first petition. Id. at 10. That approach would allow
`
`petitioners to unveil strategically their best prior art and arguments in serial
`
`petitions, using our decisions on institution as a roadmap, until a ground is
`
`advanced that results in review—a practice that would tax Board resources, and
`
` 4
`
`
`
`
`
`
`
`IPR2014-00507
`Patent 6, 451,300 B1
`
`
`
`force patent owners to defend multiple attacks. We are not persuaded that we erred
`
`by adopting a more flexible approach that assesses each case on its particular facts
`
`to achieve a result that promotes the efficient and economical use of Board and
`
`party resources, and reduces the opportunity for abuse of the process.
`
`The Board Did Not Abuse its Discretion by Determining that the
`Two Petitions Raise Substantially the Same Prior Art or Arguments
`
`Unilever argues that the Board abused its discretion by determining that the
`
`second petition raises substantially the same prior art or arguments raised in
`
`the first petition. Rehearing Req. 11-15. Unilever points out differences between
`
`the art and arguments raised in the two petitions. Id. We did not overlook those
`
`differences. The statute expressly establishes our discretion to consider whether
`
`the prior art and arguments are “substantially the same” in a first and second
`
`petition, and supplies also our authority to reject the second petition on that basis.
`
`Id. We considered “all of the papers filed in both proceedings” in exercising that
`
`discretion. Dec. 7. We considered the differences, but found that the art and
`
`arguments are nonetheless “substantially the same” within the meaning of the
`
`statute. 35 U.S.C. § 325(d).
`
`Unilever’s Request for an Expanded Panel
`
`Unilever requests rehearing by an expanded panel that includes the Chief
`
`Judge. Rehearing Req. 1, 4-8. Unilever contends that authority for raising such a
`
`request is provided in a Standard Operating Procedure that contemplates expanded
`
`panels in cases of ex parte appeals and interferences. Id. at 1, 5-6 (citing BPAI
`
`SOP 1 (Rev. 13) 2009, Sec. III(A)(2)). P&G disagrees. Opp. 1-2 (observing that
`
`the Standard Operating Procedure was drafted years before implementation of inter
`
`partes review procedures, and expressly applies to only appeals and interferences).
`
` 5
`
`
`
`
`
`
`
`IPR2014-00507
`Patent 6, 451,300 B1
`
`
`
`Unilever directs us to no persuasive authority that a panel of the Board is
`
`empowered to grant a request for panel expansion. The members of the Board
`
`deciding an institution matter are not authorized to select themselves or, of their
`
`own accord, select other Board members to decide the matter, upon request of a
`
`party or otherwise. As indicated in the Standard Operating Procedure, the Chief
`
`Judge, on behalf of the Director, may act to expand a panel on a suggestion from a
`
`judge or panel. BPAI SOP 1 at 1. The Standard Operating Procedure creates
`
`“internal norms for the administration of the Board” but “does not create any
`
`legally enforceable rights.” Id. Accordingly, we deny Unilever’s request for
`
`rehearing by an expanded panel that includes the Chief Judge.
`
`Unilever faxed a copy of the request to the Chief Judge. P&G argues that
`
`“[t]he Board should not allow parties to communicate with judges outside of the
`
`assigned panel.” Opp. 5. On that basis, P&G argues that the fax “was an improper
`
`communication” that should “be destroyed and disregarded by the” Chief Judge.
`
`Id. at 1, 5. Unilever responds that P&G’s request for relief “is moot,” because
`
`“[o]n August 14, 2014, the Office indicated that the [Chief Judge] was aware of the
`
`filing, and the faxed paper copy would be discarded.” Reply 3. On this record, we
`
`dismiss P&G’s request for relief as moot.
`
`CONCLUSION
`
`We deny Unilever’s request for rehearing and panel expansion.
`
`We dismiss as moot P&G’s request for relief based on improper service on
`
`the Chief Judge.
`
`
`
`
`
` 6
`
`
`
`
`
`
`
`IPR2014-00507
`Patent 6, 451,300 B1
`
`
`
`PETITIONER:
`
`
`Joseph Meara
`Jmeara-pgp@foley.com
`
`Michael Houston
`mhouston@foley.com
`
`Jeanne Gills
`jmgills@foley.com
`
`
`
`PATENT OWNER:
`
`David Maiorana
`dmaiorana@jonesday.com
`
`John Biernacki
`jvbiernacki@jonesday.com
`
`Michael Weinstein
`msweinstein@jonesday.com
`
`Steven Miller
`Miller.sw@pg.com
`
`Carl Roof
`Roof.cj@pg.com
`
`Angela Haughey
`Haughey.a@pg.com
`
`
` 7
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
