Two recent PTAB decisions illustrate that petitioners are not entitled to IPRs based on substantially the same prior art and arguments that the petitioners raised in previous petitions against the same patents:
In Unilever, Inc. v. The Proctor & Gamble Co., IPR2014-00506, Paper 17 (P.T.A.B. July 7, 2014), the Board denied a petitioner’s follow-on position for relying on the same prior art references used in an earlier, denied petition. The petitioner’s follow-on petition relied on thirteen prior art references, six of which had been raised in the earlier petition. As to the seven new prior art references, the petitioner failed to show that the references were not known or available to it at the time it filed the earlier petition.
In Butamax Advanced Biofuels LLC, v. GEVO, Inc., IPR2014-00581, Paper 8 (P.T.A.B. Oct. 14, 2014), the Board denied review on grounds that Butamax’s petition reasserted similar grounds as a petition Butamax had already filed in a related proceeding. The Board noted several points for IPR litigants to keep in mind: First, it emphasized that the Board’s power to deny review or joinder is discretionary: “Congress did not mandate that an inter partes review must be instituted under certain conditions. Rather . . . Congress made institution discretionary.” Likewise, joinder of IPR actions is sometimes warranted, but never required. Further, the Board noted that a petition based on substantially the same prior art and arguments that have been presented in another proceeding is essentially a rehearing request. Finally, the Board explained that the a petitioner has the responsibility to set forth in its petition all facts supporting its challenges to patentability, and it is not the Board’s responsibility to correct any errors or overlooked facts.
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