The PTAB’s order does not require that every laterfiled petition by the same party on the same claims using different prior art be denied institution. First, Unilever did not address 35 U.S.C. § 325(d) in its petition, and did not attempt to distinguish the instant petition from the first petition. Second, some of the primary references asserted in the second petition were listed on the face of the patentatissue, which, according to the board, implicated other language of 35 U.S.C. § 325(d), i.e., that some of the prior art was “the same or substantially the same prior art [] previously presented to the office.” Third, the board also indicated that Unilever did not explain why the references asserted in the later petition could not have been filed in the first petition. Thus, according to the board, 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.”
Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Company, Case IPR201400628 (PTAB Oct. 20, 2014).