Conopco, Inc. dba Unilever v. Procter & Gamble

In two recent decisions by the Patent Trial and Appeal Board (PTAB or Board), the Board denied petitioner requests for rehearing by an expanded panel under 37 C.F.R. § 42.71(c). Conopco, Inc. dba Unilever v. Procter & Gamble, Case No. IPR2014-00506 (PTAB, Dec. 10, 2014) (Obermann, APJ); AOL v. Coho Licensing LLC, Case No. IPR2014-00771 (Mar. 24, 2015) (Quinn, APJ).

Unilever v. Procter & Gamble

Prior to its request for rehearing, the petitioner had filed two separate petitions for inter partes review. The Board denied both petitions, noting in its second denial that the petitioner had raised “substantially the same prior art or argument” that was “previously presented” in the first petition. The petitioner’s request for rehearing asserted, inter alia, that “the Board (1) lacked the statutory authority to deny the second petition . . . and (3) had erroneously precluded a second petition that raised improved, new prior art and arguments.” The petitioner also requested a rehearing before a panel expanded to include the chief judge.

The petitioner argued that neither the statutory framework nor rules governing inter partes review indicates that a petitioner is barred from filing a “second, follow-on petition” that corrects deficiencies in the first petition. The Board rejected the petitioner’s argument, noting that the Board did not hold that a petitioner was barred from filing a second, follow-on petition. Rather, the Board assessed the facts of the petitioner’s second petition and exercised its discretion (as authorized by statute) to deny institution. The Board noted that Congress provided that the director, and by extension the Board, “may, but not must, institute a proceeding,” even when a petitioner establishes a reasonable likelihood of prevailing with respect to at least one challenged claim. The Board thus emphasized that it maintains the authority to exercise its institution discretion in any decision.

The Board also rejected the petitioner’s argument that its second petition raised new prior art and arguments, concluding that the art and arguments in the second petition were “substantially the same” as those in the first.

Turning to the petitioner’s request for an expanded panel, and its contention that a standard operating procedure (SOP) contemplated expanded panels in cases of ex parte appeals and interferences, explained that the SOP simply stated that the Board may expand a panel “on a suggestion from a judge or panel,” but did not create any “legally enforceable rights” in the petitioner. The Board therefore rejected the request for an expanded panel.

AOL v. Coho Licensing LLC

The Board also rejected a request for rehearing by an expanded panel in its AOL decision. Once again, the Board emphasized that a panel may be expanded “on a ‘suggestion’ from a judge or panel” but that parties “are not permitted to request, and panels do not authorize, panel expansion.”

In its petition for rehearing, the petitioner cited to a dissent in the denial of institution as evidence of the need for an expanded panel. The Board rejected the argument, stating that a dissent “shows neither an abuse of discretion nor a conflict that weighs in favor of panel expansion.” The Board also took note of the petitioner’s introduction of new facts and arguments in its request for rehearing, declaring that the Board cannot consider facts not before it and thus did not abuse its discretion in denying institution.

Practice Note: Though these Board decisions were not designated as “informative,” and thus not binding on future panels, it appears unlikely that the Board will entertain parties’ requests for expanded panels in inter partes review proceedings and that presentation of such a request risks antagonizing the Board.