January, 18th, 2019 at 10:21 am
By Wesley W. Whitmyer, Jr. Read Part 1 I have been asked this question hundreds of times. You can probably guess that the person doing the asking has just been accused of patent infringement. [Read More…]
January, 10th, 2017
Under the AIA, the PTAB can deny institution of an IPR, CBM, or PGR because “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. §§ 325(d), 314. This provides patent owners with a powerful defense against post-grant petitions. To resolve Section 325(d) defenses, the Board typically considers three factors: (1) the differences between previously-considered and current prior art and arguments (2) previously-filed petitions against the same patent by the same party or another party; and (3) the rights and interests of the parties and USPTO. Patent owners and petitioners should pay attention to these factors, as approximately one-third of Section 325(d) challenges decided in 2016 resulted in institution denial.
Identical/Similar Prior Art
The Board often denies petitions that rely on the same prior art previously used to challenge the validity of a patent. See, e.g., IPR2015-01511, Paper 10 at 6-7; IPR2015-01632, Paper 10 at 7-10. The Board will also deny petitions where a new prior art reference is substituted for another in an obviousness analysis, but the overall theory of unpatentability remains unchanged. Petitions can even be denied where new prior art or arguments could have been presented in an original petition. CBM2016-00080, Paper 12 at 10-12; IPR2016-00777, Paper 10 at 11. And the Board has found that previously-made arguments need not be decided on the merits; denial requires only that the argument be presented to the USPTO in a previous proceeding. See, e.g., IPR2016-01027, Paper 13 at 13 (“exercise of discretion under § 325(d) is not necessarily limited to only those arguments that were previously decided ‘on the merits.’”).
No Second Bite
The Board generally disfavors repeated attacks against the same patent, especially where the same party uses USPTO decisions as a roadmap to bolster previously-defeated challenges. CBM2015-00047, Paper 7 at 13 (“[A] decision on a petition . . . is not simply part of a feedback loop by which a petitioner may perfect its challenges through a subsequent filing.”); IPR2015-01511, Paper 10 at 15-16 (denying institution where a new party filed a sixth petition against the same patent). Challenges by a new party are generally granted more leeway, particularly where the prior art or argument was only presented during prosecution. See IPR2015-01089, Paper 8 at 19-20.
Rights v. Prejudice
Finally, the Board weighs interests of patent owners against petitioners’ desires to be heard. Patent owners are entitled to be free of duplicative or endless proceedings regarding a patent’s validity. See IPR2015-01511, Paper 10 at 12. This generally aligns with the Board’s efficiency interests for both itself and the parties. See IPR2015-00114, Paper 14 (“[I]t is more efficient for the parties and the Board to address a matter once rather than twice.”). Weighed against these concerns is the potential prejudice to a petitioner. Such prejudice, for example, can arise if a statutory bar under Section 315(b) could prevent the petitioner from refiling its petition following a Section 325(d) denial. 35 U.S.C. § 315(b); see IPR2014-01259, Paper 8 at 6-7; IPR2015-01511, Paper 10 at 14.
The risks of a Section 325(d) denial typically are not worth rehashing arguments and prior art previously considered by the USPTO. Instead, petitioners should conduct comprehensive prior art searches prior to filing any petition to identify the strongest new institution grounds. If repetition of prior art is unavoidable, the petition should highlight how the reference is being applied in a new way, for example against different claims or in a new prior art combination.
Patent owners should analyze a patent’s prosecution history and all post-grant challenges to see if they involve the same or similar prior art or arguments at issue in a new petition. If so, patent owners should highlight the similarities between new and previously-used prior art and arguments in their preliminary responses. And, where applicable, preliminary responses should emphasize the resource-saving effect that denying the petition will have for both the USPTO and the parties.