When challenging a patent through IPR, petitioners may be tempted to offer an improved version of an argument that had been offered by the examiner during prosecution, using similar prior art but shoring up potential shortcomings of what came before. However, three decisions that the Board recently designated as “informative” illustrate that a petitioner that isn’t careful when reusing arguments may not be successful.
The Board designates decisions as “informative” to provide its judges with guidance on how to approach certain issues. (Read more about which standards it applies in making this designation.) Here, the Board cited each decision’s application of 35 U.S.C. § 325(d), which permits the Board to deny institution of petitions that use “the same or substantially the same prior art or arguments [as] previously … presented to the Office.”
The three cases—Unified Patents v. Berman (IPR2016-01571), Hospira v. Genentech (IPR2017-00739), and Cultec v. Stormtech (IPR2017-00777)—each involved petitions that offered at least some references or arguments already considered by the PTO. The patent owner flagged the issue, asking the Board to exercise its discretion under § 325(d) to decline to institute on the rehashed art and arguments.
Notably, these three cases demonstrate that the Board may deny institution on this basis even where aspects of the arguments, at first glance, seem new. In Unified Patents and Cultec, the Board declined to institute after finding that ostensibly new references were “substantially the same” as references that had already been considered. In Hospira, the Board noted that the underlying reason to consider a new reference (i.e., an issue with the priority date of the challenged patent) had already been rejected by an examiner. The Board consistently looked beyond the reference names and examined the underlying argument.
The Board’s designation of these decisions as “informative” may be a sign that it will be looking closely at this issue going forward. In cases where a petition needs to use familiar references or arguments, petitioners should carefully explain why their petition is substantively different from what an examiner previously saw. Patent owners should keep an eye out for rehashed prosecution rejections. For both sides, Section 325(d) is an angle to seriously consider, even for art that looks new but is arguably cumulative of previously examined art.