Conopco v. Procter & Gamble (IPR2014-00506): Rehearing Denied for a Follow-on Petition

Conopco, Inc. dba Unilever v. The Procter & Gamble Co., IPR2014-00506 (Paper 25, December 10, 2014), is a short rehearing decision that anticipated much of the later law on follow-on petitions. Unilever had filed a second petition against claims of P&G’s U.S. Patent No. 6,974,569 after its first petition was denied. The Board denied the second petition, and Unilever asked for rehearing by an expanded panel including the Chief Administrative Patent Judge. A substantially identical request in a companion case, IPR2014-00507, was decided at the same time.

When the Board later decided General Plastic v. Canon in 2017, it cited this decision and described it as informative. Designations can change, so check the USPTO’s current list of precedential and informative decisions.

Background

The Board had denied the second petition under 35 U.S.C. § 325(d) because it raised substantially the same prior art or arguments that Unilever had presented in its first petition. In considering that question, the Board looked in part at whether the new art and arguments were known or available to Unilever when it filed the first petition.

On rehearing, Unilever argued that the Board lacked statutory authority to deny a follow-on petition that tried to correct deficiencies identified in the first denial; that the Board had improperly applied estoppel-type reasoning by asking what Unilever knew earlier; and that the second petition actually presented improved, new art and arguments. Unilever also faxed a copy of its request to the Chief Judge, and P&G objected to that communication.

What the Board decided

Applying the abuse-of-discretion standard of 37 C.F.R. § 42.71(c), and noting that the requesting party must identify what was misapprehended or overlooked under § 42.71(d), the Board denied rehearing on every point.

• Authority. The Board had not held that second petitions are barred. It assessed the particular facts and exercised the discretion that § 325(d) expressly grants to reject a petition raising substantially the same art or arguments. It added that § 314(a) makes institution discretionary even when the threshold is met.
• What the petitioner knew. Unilever gave no rational basis for preventing the Board from considering whether the new art was known or available when the first petition was filed. The Board explained that Unilever’s bright-line approach would let petitioners reveal their best art in stages, “using our decisions on institution as a roadmap,” taxing Board resources and forcing patent owners to defend repeated attacks. A flexible, case-by-case approach was not an abuse of discretion.
• Substantially the same. The Board had considered the differences Unilever identified and all papers in both proceedings, and still found the art and arguments substantially the same.
• Expanded panel. Unilever pointed to a standard operating procedure written for appeals and interferences. The Board found no authority letting a panel grant a party’s request for expansion; under the procedure, the Chief Judge may expand a panel on a suggestion from a judge or panel, and the procedure creates no enforceable rights.

P&G’s request for relief over the fax was dismissed as moot, because the Office had already said the faxed copy would be discarded.

Why it matters

The “roadmap” concern and the attention to what the petitioner knew at the first filing both reappear in the General Plastic factors; see General Plastic v. Canon. Conopco shows that the Board was weighing those concerns years earlier under § 325(d).

The decision is also a practical lesson on rehearing. Pointing out differences the Board already considered is not enough; a request must show an actual misapprehension or abuse of discretion. For another rehearing decision, see Huawei v. Optis. For how discretion fits with the institution threshold, see the different threshold standards.

The USPTO’s discretionary-denial practice, and its procedures for review beyond the panel, have changed repeatedly since 2014. Readers should check current USPTO guidance.

Key takeaways

• The Board denied rehearing of its § 325(d) denial of a second petition raising substantially the same art and arguments.
• It may consider whether new art was known or available when the first petition was filed.
• Follow-on petitions that use an institution denial as a roadmap raise fairness and efficiency concerns.
• A panel cannot grant a party’s request for an expanded panel; check current USPTO procedures for review options.