The Board has designated three decisions as “informative” to provide guidance to parties as to how it may deny IPR petitions that rely on prior art or arguments that have already been considered by the Patent Office.
When determining whether to institute inter partes review, 35 U.S.C. § 325(d) allows the Board to consider whether the same, or substantially the same, prior art or arguments were previously considered by the Patent Office. The Board recently designated three decisions that address § 325(d) as “informative” opinions. Although informative opinions are not considered binding authority, these three decisions discussed in turn below provide guidance to petitioners and insight into how the Board may view “old” arguments and art.
In Unified Patents, Inc. v. Berman, IPR2016-01571 (PTAB Dec. 14, 2016) (Paper 10), the Board rejected an invalidity challenge that relied upon (1) a reference that was “substantially considered” by the examiner during prosecution and (2) a user’s manual that was cumulative of art that was considered by the examiner. Noting that the petitioner failed to provide a compelling reason why the previously-considered arguments should be readjudicated, the Board exercised its discretion under § 325(d) and rejected the invalidity challenge. However, the Board did institute review on another ground that relied upon arguments and art that were not considered by the examiner.
The panel in Hospira, Inc. v. Genentech, Inc., IPR2017-00739 (PTAB Jul. 27, 2017) (Paper 16) reached a similar conclusion. The petitioner argued that the asserted reference constituted prior art because the challenged claims were not entitled to their claimed priority date. The Board found that the petitioner’s argument had already been considered and rejected by the examiner during prosecution. Accordingly, the Board exercised its discretion under § 325(d) and denied the petition.
In Cultec, Inc. v. StormTech LLC, IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7), all asserted grounds of invalidity relied upon a prior art reference that had been considered during prosecution when it was presented to the examiner as part of a Third-Party Submission. The Board also concluded that the disclosure of the remaining asserted references were substantially the same as the reference that was considered by the examiner. Because the petitioner presented the same or substantially the same arguments that were previously considered by the examiner, the Board exercised its discretion under § 325(d) and denied the petition.
While not precedential, these three informative opinions shed light onto how the Board may view art and arguments that have already been considered by the Patent Office.