The PTAB recently signaled a warning to petitioners about the dangers of third party submissions made during patent prosecution—even during prosecution of a separate but related patent. For patent holders, this warning serves as an opportunity to protect their patents in similar situations. In PGR2017-00038, Live Nation Entertainment, Inc. filed a petition to institute post-grant review of U.S. Patent No. 9,466,035. Live Nation’s arguments were that the claims were patent ineligible under 35 U.S.C. 101 and would have been obvious under 35 U.S.C. 103.
Unfortunately for Live Nation, the holder of the ’035 patent identified a related patent (U.S. Patent No. 9,639,811), during the prosecution of which a third party had submitted similar arguments and art. The Board found the claims of the related patents to be very similar to the claims of the ’035 patent and the arguments and art to be extremely similar to those presented in the petition for PGR. Portions of the arguments from the third party submission in the ’811 patent had even been copied verbatim into the petition with resulting errors. Accordingly, relying on its authority to reject a petition where “the same or substantially the same prior art or arguments previously were presented to the Office” (35 U.S.C. 325(d)), the Board denied institution of the petition.
Given this decision, petitioners and patent holders should interpret 35 U.S.C. 325(d) as applying to a patent’s entire family, especially if other applications or patents include similar claims. It is therefore critical for petitioners to review the prosecution history of the family so as to prevent improper re-use (deliberate or accidental) of art or arguments. Similarly, patent holders should review the family history in case a petition has this Achilles’ heel. Particularly fortunate patent holders may find a clear case of copy and paste!