PTAB Institutes IPR Based on Art Previously Considered During Prosecution

The PTAB instituted IPR based on a reference that had been considered by the examiner during prosecution because the petition relied upon a previously unconsidered portion of the reference.

Under 35 U.S.C. § 325(d), the PTAB has discretion to deny an IPR petition for relying on arguments or prior art previously considered by the patent examiner during prosecution. As discussed in a previous post, the PTAB recently designated three IPR decisions as “informative” to provide guidance as to how the PTAB may treat “old” arguments or art under § 325(d). Over the last year or so, it seems that the PTAB has relied on its discretion under § 325(d) to deny IPR petitions more frequently than it did in previous years.

However, in Donghee America, Inc. v. Plastic Omnium Advanced Innovation and Research, IPR2017-01654, Paper 9 (PTAB Jan. 19, 2018), the PTAB instituted review, despite all of the invalidity grounds relying on a primary reference that had been considered by the examiner during prosecution. As discussed in further detail below, the PTAB chose not to exercise its discretion under 35 U.S.C. § 325(d) because the petitioner’s arguments differed substantially from the examiner’s treatment of the same prior art reference.

The petitioner in Donghee petitioned for IPR of claims directed towards a process for snap-riveting accessories to the wall of a plastic fuel tank during molding of the tank. All of the petitioner’s five invalidity grounds relied upon a reference (“Borchert”), which the examiner had considered during prosecution of the challenged patent.

In discussing whether to exercise its discretion under § 325(d) for relying on Borchert, the PTAB first discussed that § 325(d) involves a balance between competing interests. On one hand, according to the PTAB, there are interests in giving a petitioner the opportunity to correct errors made by the Patent Office. On the other hand, there are interests in conserving the PTAB’s limited resources and in allowing patent owners to enjoy quiet title to their patent rights.

In this case, although the examiner had rejected broader pending claims based on Borchert, the PTAB decided not to deny the petition under § 325(d) because the petitioner’s arguments differed “substantially” from the examiner’s application of the reference during prosecution. Specifically, the PTAB found that the examiner never identified or analyze an unnumbered element shown in a figure of Borchert, while the petitioner’s arguments relied on that element for a material claim element. Accordingly, the PTAB concluded that the petition made “distinct arguments that do not overlap with the arguments made during examination.”

Additionally, the PTAB noted that the examiner had not considered the declaration testimony from the petitioner’s expert when evaluating Borchert. The PTAB found that the declaration testimony, along with the new arguments made in the petition, warranted reconsideration of Borchert. Accordingly, the PTAB decided not to deny the petition under § 325(d).

Moreover, the PTAB found that the petition established a reasonable likelihood of showing that the challenged claims were unpatentable on all asserted grounds. As such, the PTAB instituted review of all challenged claims.

Although there seems to be an uptick in the number of IPR petitions being denied under § 325(d), this case shows that the PTAB often does institute review based on art that was previously considered by the examiner.