The Post-Grant Strategist

An IPR follow-on petitioner may find it particularly challenging to select the best prior art references and arguments to submit to the PTAB. To make matters worse, the PTAB may decide to invoke its discretionary denial under 35 U.S.C. § 325(d) if it considers the prior art and/or arguments submitted in the follow-on petition to be the same or substantially the same as those considered during prosecution, in parallel proceedings, or in an earlier-filed IPR petition, even if the follow-on petition is filed by a different entity.

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.