Petitioner Unilever filed an earlier petition for IPR of 33 claims of a patent. In the Decision on Institution, the Board denied review of 11 claims and granted review of the rest. Unilever then filed a second petition for IPR, challenging the patentability of the 11 denied claims. The second petition relied on 13 prior art references: six raised in the earlier petition and seven new references.
Unilever did not persuade the Board the second petition presented substantially different prior art. The Board observed that Unilever “presents no argument or evidence that the seven newly cited references were not known or available to it at the time of filing of the [earlier] petition.” And nine grounds in the petition were based on references previously presented in the earlier petition. The Board concluded that, on this record, the two petitions presented “the same or substantially the same prior art.”
The Board also concluded the two petitions presented “substantially the same” arguments. The Board focused on two purported obviousness grounds as particularly illustrative. After the Board denied the two grounds in the earlier petition, Unilever modified the original obviousness combinations in the second petition by substituting or adding additional secondary references. But the primary references in the obviousness grounds remained the same.
The Board observed that Unilever used the Board’s Decision on Institution “to bolster challenges that were advanced, unsuccessfully, in the [earlier] petition” but nevertheless concluded the second petition did not “present[] considerations that tip the balance in favor of review.” Because the second petition relied on “the same or substantially the same prior art or arguments” advanced in the earlier petition, the Board denied the second petition under 35 U.S.C. § 325(d).
Put simply, the Board does not look favorably on follow-on petitions that are mere variations on a previously denied theme.
Before Green, Obermann, and Elluru, Administrative Patent Judges
Informative Opinion: Unilever, Inc. v. The Proctor & Gamble Co., IPR2014-00506, Paper 17 (P.T.A.B. July 7, 2014)