Under 35 U.S.C. § 325(d), the Patent Trial and Appeal Board (“Board”) may “take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”[1] From seven Informative Decisions, in which the Board used its discretion under § 325(d) to deny institution of inter partes review, several trends have emerged that reveal how the Board has used the statute as a mechanism to reduce the number of inter partes reviews it must consider and to create a general shift in favor to patent owners.
Based on the seven Informative Decisions, the Board appears to apply the statutory language “previously…presented to the Office” fairly broadly. In rejecting institution of the seven inter partes reviews, the Board relied on evidence presented in a variety of related proceedings, including other inter partes reviews and ex parte reexaminations of the same patent, whether those decisions were denied, granted, ongoing, or submitted by unrelated third party petitioners.[2] In fact, in one case, the Board even demonstrated a reluctance to revisit arguments and prior art submitted during prosecution of the subject patent.[3] District court cases and proceedings pertaining to related patents were also noted, although not necessarily relied on to support a rejection under 35 U.S.C. § 325(d).[4] In casting such a wide net of what constitutes “previously…presented to the Office,” the Board makes clear its disfavor of duplicative proceedings that force the patent owner to repeatedly defend the same claims based on the same evidence. This holds true even if the later-filed petition for inter partes review would be the only opportunity for the petitioner to submit arguments with respect to the subject claims, thus requiring the petitioner to rely on a third party to prove unpatentability in a related proceeding.[5]
The Board also appears to strongly discourage second-round inter partes review petitions that attempt to remedy the deficiencies of an earlier filed petition. In two such cases, after identifying the failings of the first petition in the institution decision, the Board refused to accept the same arguments in a second petition that had simply been bolstered by new evidence to address the Board’s concerns.[6] The Board explains that their disapproval of this trial-and-error fashion of submitting inter partes review petitions is a preventative measure to mitigate administrative abuse of the proceedings by petitioners and to “achieve a result that promotes the efficient and economical use of Board and party resources.”[7]
As the PTAB continues to deny review petitions using their discretion under 35 U.S.C. § 325(d), the number of petitions filed and instituted may be reduced. Petitioners should take caution to avoid duplicative arguments and prior art, and to put forth their strongest evidence in a first filing, as the chances of successful follow-up petitions appear to be lessening as the Board’s workload grows. While the statute provides clear outright benefits for patent owners, they can further increase their chances at getting a review petition denied by citing to repeated arguments from any related proceedings and from the patent prosecution in their Patent Owner’s Preliminary Response and/or their opposition to the petitioner’s motion for joinder.
[1] 35 U.S.C. § 325(d).
[2] IPR2013-00454, Paper 12, at 2 (September 25, 2013); IPR2014-00506, Paper 17, at 2 (July 7, 2014); IPR2014-00487, Paper 8, at 2 (September 11, 2014); IPR2013-00324, Paper 19, at 2 (November 21, 2013); IPR2014-00702, Paper 13, at 2 (July 24, 2014).
[3] IPR2014-00315, Paper 14, at 2 (July 8, 2014).
[4] IPR2014-00436, Paper 17, at 3 (June 19, 2014).
[5] IPR2014-00702, Paper 13, at 7 (“Although we recognize that, as a result of our decision, Unified will not have an opportunity to submit arguments or evidence with respect to claims 1-4, 29-33, 35, and 41 of the ‘791 patent, there are sufficient reasons to exercise our discretion to deny the Petition in this proceeding.”). In this case, the claims had been held unpatentable in two cases and one was on appeal.
[6] IPR2014-00506, Paper 17, at 8; IPR2014-00487, Paper 8, at 6.
[7] IPR2014-00628, Paper 23, at 5 (March 20, 2015).