Conopco at PTAB: 'follow-on' second petitions in order to 'correct deficiencies noted' by the Board in decisions that deny a first petition
"[The petitioner] does not show that we misapplied § 325(d) in assessing whether 'the same or substantially the same prior art or arguments' were raised in the first and second petitions. . . . Our authority is grounded not only in § 325(d), but also in the broader discretion to deny a petition under § 314(a). . . . [The petitioner] argues that the Board should not have considered whether any new prior art or arguments raised in the second petition were known or available to [the petitioner] at the time of filing the first petition. . . . [The petitioner] advances a bright-line approach that would allow petitioners to file 'follow-on' second petitions in order to 'correct deficiencies noted' by the Board in decisions that deny a first petition. That bright-line approach would allow petitioners to unveil strategically their best prior art and arguments in serial petitions, using our decisions on institution as a roadmap, until a ground is advanced that results in review—a practice that would tax Board resources, and force patent owners to defend multiple attacks. We did not err by adopting a more flexible approach that assesses each case on its particular facts 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."
Petition for Inter Partes Review by Conopco, Inc., IPR2014-00628 (PTAB March 20, 2015, Order) (Obermann, APJ)
For a general discussion, see "Second Bites At the Post-Grant Apple?" in the National Law Review.
The Board has considered redundancy under § 325(d) in the context of multiple IPR/CBM petitions on approximately 40 occasions, and denied the subsequent petition approximately 62% of the time, often criticizing Petitioner’s subsequent petition as a “second bite at the apple.” See e.g., Medtronic Vascular, Inc. v. Endotach LLC, Case IPR2014-00695 (PTAB Sept. 25, 2014) (denying Petitioner’s second petition as an inappropriate “second bite at the apple” where Petitioner failed to present “argument or evidence to explain why the grounds of unpatentability asserted in the [second] Petition could not have been asserted in the [first Petition]”).
When denying a subsequent petition under §325(d), the Board frequently faults the Petitioner for failing to explain why the subsequent petition should be instituted over “the same or substantially the same prior art or arguments” that were presented in previous petitions. See Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487 (PTAB Sept. 11, 2014) (denying Petitioner’s third petition as “essentially a duplicate of the previously denied petitions” where Petitioner failed to provide any reasoning as to why the third petition should be instituted over similar prior art or arguments contained in prior petitions); Biodelivery Sciences Int’l. v. RB Pharma. Ltd., IPR2014-00998 (PTAB Dec. 19, 2014) (denying Petitioner’s second petition that merely “recycled previous art and arguments”).
The Board’s decisions to institute (or not institute) subsequent petitions filed to correct errors in previous petitions are somewhat inconsistent. For example, in Butamax Advanced Biofuels, Inc. v. Gevo, Inc., IPR2014-00581 (PTAB Oct. 14, 2014), the Board denied Petitioner’s second IPR petition, which sought to correct an error identified by the Board in the earlier petition.