United State Postal Service v. Return Mail, Inc.; Conopco, Inc. v. The Proctor & Gamble Co.

Two recent orders by the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB or Board) emphasize how important it is for a petitioner to get it right the first time.  The standard for institution of a covered business method (CBM) review or inter partes review (IPR) is whether the information presented in the petition demonstrates “that it is more likely than not that” a challenged claim is unpatentable.  In two recent institution orders, the PTAB clarified when this standard is met in the context of petitions that are based on prior art and/or arguments that may have been previously before the USPTO.

In one case, the PTAB granted institution over the patent owner’s argument that the same or similar prior art was considered in an earlier proceeding.  United State Postal Service v. Return Mail, Inc., CBM 2014-00116 (PTAB, Oct. 16, 2014) (Turner, APJ).  In another case, the PTAB denied institution based on a corrected petition, noting that the prior art and arguments raised were “substantially the same” as those presented in an earlier (unsuccessful) petition.  Conopco, Inc. v. The Proctor & Gamble Co., IPR 2014-00628 (PTAB, Oct. 20, 2014) (Obermann, APJ).  In both cases the PTAB noted its statutory mission to conduct proceedings quickly, efficiently and economically.

In the U.S. Postal Service case, the PTAB rejected the patent owner’s argument that the petition should be denied because the same or similar prior art references were submitted in an earlier proceeding.  The patent owner argued that “four of the five prior art references that [petitioner] USPS has submitted in this proceeding were submitted and considered by the Office” during a prior reexamination proceeding, and that the petitioner had already tried, unsuccessfully, to invalidate the…patent and should not be permitted to waste more resources trying again.  The PTAB took note of the burden on the patent owner and the PTAB to rehear the same or substantially the same prior art or arguments from the prior reexamination but found “sufficient reasons in this proceeding to exercise our discretion to institute a covered business method patent review.”  In doing so, the PTAB pointed out that “not all of the art proffered has been considered previously in the reexamination or reissue proceedings,” and that there were “additional grounds that can be considered in a covered business method patent review, as well some . . . that cannot be considered, as compared with the prior reissue or reexamination proceedings.”

In considering the petition in Conopco, the PTAB denied a corrected petition for IPR, finding that it raised similar arguments to an earlier petition.  “[B]ased on the particular circumstances presented in this case, we decline to institute review. . . .  We have compared the prior art and arguments raised in the instant Petition to those raised in [the earlier] Petition.  Based on the information presented, we are persuaded that the instant Petition raises, at minimum, ‘substantially the same . . . arguments’ that ‘previously were presented to the Office’ in the [earlier] Petition. . . . On this record, the interests of fairness, economy, and efficiency support declining review—a result that discourages the filing of a first petition that holds back prior art for use in successive attacks, should the first petition be denied. . . . Based on the circumstances before us, therefore, we exercise our discretion and decline to institute review.”