While the Patent Trademark and Appeals Board (PTAB) has been described by some as a “death squad” for patents,1 recent decisions indicate that a significant shift in approach may be taking place at the PTAB that will make it increasingly difficult for parties challenging patents to successfully cancel claims being asserted against them. Specifically, petitioners have increasingly relied upon the practice of filing multiple petitions to challenge claims, in particular, filing IPRs serially to address any alleged deficiency raised by the PTAB for an earlier-filed petition. This practice has contributed to the rise in overall IPR filings.
In Conopco, Inc. dba Unilever v. Proctor & Gamble Co. (Unilever),2 a PTAB panel denied the challenger Unilever’s request for rehearing an IPR petition, and in doing so explained how it would approach the filing of multiple IPR petitions on a single patent or set of challenged claims. Specifically, the Unilever decision appears to indicate an increasingly strict interpretation of 35 U.S.C. § 325(d) to reduce the number of IPRs filed and instituted on by the PTAB. Section 325(d) grants the PTAB the discretion to reject an IPR petition with the relatively ambiguous standard of whether “the same or substantially the same prior art or arguments previously were presented to the Office.”3
Since the inception of the IPR process, patent challengers have increasingly utilized multiple IPR or Covered Business Method (CBM) petitions to challenge claims, including the use of serial petitions in an effort to address issues raised by a PTAB panel in an earlier IPR filing. Such an approach allows Petitioners to utilize the claim construction adopted by the PTAB, as well as to address any alleged deficiency raised in a denial of an IPR. While there is a one-year bar date for filing of IPR petitions, that year window has so far provided some challengers an adequate opportunity to file subsequent IPR petitions following the denial or partial denial of an earlier petition. Such serial petition filings as well as multiple filings by different companies defending against a patent or series of patents have contributed to the increasing number of IPR petitions before the PTAB.
Unilever had filed an IPR petition on the claims of the ’155 patent in question in a first petition in 2013.4 In that petition, Unilever had relied upon certain prior art references. The PTAB denied institution of this first IPR, stating that the art cited by Unilever failed to anticipate or make obvious any claim of the ’155 patent.5Following the denial of its first petition, Unilever filed a second IPR petition in 2014 concerning the same claims, this time including additional art that it believed remedied the alleged deficiencies raised by the PTAB of the art cited in its first petition.6 In response, the Patent Owner argued that § 325(d) should apply, because: (1) the arguments in the second petition were the same as those in the first petition and (2) the additional art was known to Unilever at the time of the first IPR filing, citing particularly to two references that were on the face of the ’155 patent.7Unilever had not raised or argued any issues related to § 325(d) in its second petition.8
In its Decision denying institution of the second IPR, the PTAB relied primarily upon its discretion under § 325(d), finding that the arguments in the subsequent petition were substantially the same as the earlier-denied petition.9 It then noted that its decision was further based on its understanding that the additional art was “similar, if not ‘substantially the same.’”10 The PTAB acknowledged the Patent Owner’s argument that the additional art was known to Unilever when it filed its first petition, noting that Unilever did not present evidence to the contrary. Interestingly, the PTAB failed to specify what language it was relying on for its proposition that prior art must not be known to a Petitioner at the time of an earlier IPR filing. Instead, the PTAB generally cited to § 314(a), which authorizes the institution of IPRs but does not mandate it, as implicitly granting the PTAB broad discretion in the institution of IPRs,11 and it ultimately appeared to be creating a new requirement under either § 325(d) or § 314(a) that does not exist in the plain language of the statutes.12
The PTAB also specifically rejected what it viewed as an approach by Unilever to use “serial” filings of IPR petitions, citing to concerns over forcing patent owners to “continually defend against repetitive  challenges to the same patent claims.”13 In its subsequent decision to deny Unilever’s request for rehearing, the PTAB rejected an argument by Unilever that advocated the allowance of “follow-on” petitions to “correct deficiencies noted by the Board in decisions that deny a first petition.”14The PTAB explained that it was instead adopting an approach “to achieve a result that promotes the efficient and economical use of Board and party resources, and reduces the opportunity for abuse of the administrative process.”15
The Unilever decision is a marked shift from previous applications of § 325(d) by the PTAB. For example, in Medtronic, Inc. v. NuVasive, Inc.,16 which was designated an “informative” decision by the PTAB, § 325(d) was used as a basis to reject the IPR petition.17 In that situation however, the IPR petition was denied not only because of the PTAB’s finding that “nearly identical” grounds had been proposed in the denied petition, but also that claims in question were already the subject of instituted proceedings which had oral arguments scheduled.18
The significance of the Unilever decision and the rationale behind it cannot be overstated. In short, the PTAB now appears to be utilizing § 325(d) as a means of winnowing down the number of IPR petitions before it in a new manner, including petitions challenging claims that have no instituted IPRs, rather than for claims which already have instituted grounds. With such an approach, the PTAB is shifting the IPR process in favor of patent owners by making it increasingly difficult to cancel challenged claims and, at the least, discouraging follow-on IPR petitions. While the effect of the decision is not clear yet, at a minimum it underscores the importance of carefully preparing a strong initial petition, as the PTAB may no longer provide patent challengers the opportunity to utilize a second petition on the same claims. For any later-filed petitions on the same claims, special care and strategies will be necessary to avoid the application of § 325(d) as now interpreted by the PTAB, including decisions regarding which prior art references to utilize and what justifications and distinguishing arguments should be raised.