The Patent Trial and Appeal Board (PTAB) may deny institution of inter partes review (IPR) of claims of a patent if the Petition for IPR repeats the same issues made during prosecution of the patent, even if the Petition uses a prior art reference cited during prosecution to reject only other claims of the patent and uses new secondary references.  Additionally, where the newly cited art and arguments are the same or substantially the same as those previously presented to the Office, the PTAB will not reconsider the any evidence of secondary considerations already considered during prior prosecution.

On February 24, 2016, in Ziegman v. Stephens (IPR2015-01860), the PTAB denied institution of IPR of claims 12-15 of U.S. Patent No. 8,881,447 (the ‘447 patent), because the Petitioner presented substantially the same art or arguments as those previously presented to the U.S. Patent and Trademark Office (the Office).

The PTAB’s discretion on whether to institute an IPR is guided by 35 U.S.C. § 325(d), reciting, in relevant part:

In determining whether to institute or order [an IPR] proceeding … the Director 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.

In the prosecution history of the ‘447 patent, U.S. Patent Application Publication No. 2010/0275503 of Ziegmann (Ziegmann ‘503) and U.S. Patent No. 8,230,642 issued to Ziegmann (Ziegmann) were cited to and considered by the Examiner in an Information Disclosure Statement.  In an Office Action, claims 12-15 were rejected under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent Application Publication No. 2005/0274057 of McCulloch (McCulloch) in view of U.S. Patent No. 872,041 issued to Armstrong (Armstrong).  McCulloch was used to disclose all of the features of an animal trap, except for a circular or shaped-end trigger that was allegedly taught by Armstrong.  In the same Office Action, claim 1 was rejected under § 103(a) as being unpatentable over Ziegmann ‘503 in view of another secondary reference.

In response to the Office Action, an Amendment was filed, in which evidence was submitted in support of an argument regarding secondary considerations, to overcome the § 103 rejection of claims 12-15.  In response to the Amendment, a Notice of Allowance was issued, in which the Examiner acknowledges the arguments regarding secondary considerations to be the reasons for allowance.

The Petitioner asserted that claims 12-15 are unpatentable as obvious over Ziegmann in view of new secondary references, particularly, that Ziegmann discloses all of the elements of independent claim 12, except for the shaped-end trigger that is allegedly taught by the secondary references.  The Petitioner further asserted that there is an insufficient nexus between the evidence of secondary considerations and claims 12-15.

Regarding Ziegmann, the PTAB determined that Ziegmann was substantively presented to and considered by the Office with respect to claims 12-15, namely, in the IDS and in the rejection of claim 1 over Ziegmann ‘503 in the Office Action.  Although the Office did not use Ziegmann to reject claims 12-15, the PTAB held that the Office used McCulloch in the same substantive manner as the Petitioner used Ziegmann: to disclose all of the elements of claim 12 except for the shaped-end trigger.

Regarding the new secondary references, the PTAB determined that it was substantively presented to and considered by the Office as to whether it would have been obvious to modify a primary reference to include the shaped-end trigger.  Even though the Office cited Armstrong and the Petitioner cited the secondary references to disclose the shaped-end trigger, the PTAB asserted that the Office acknowledged expressly that the evidence of secondary considerations overcame the Office’s conclusion that it was obvious to modify the primary reference to include the shaped-end trigger.  Accordingly, substituting Armstrong with the new secondary references did not alter the issue of weighing the evidence of secondary considerations.  Interestingly, the PTAB did not reconsider the evidence of secondary consideration, saying that such reconsideration “will devolve into a resource-consuming dispute … on an issue already and unambiguously presented previously to and considered by the Office.”

When preparing a Petition for IPR, patent practitioners should not “rinse and repeat” issues already presented to the Office during prosecution.  Typically, such repetition can be avoided by using new prior art to render claims anticipated or unpatentable, and thus raising new issues.  However, as seen in Ziegman, when claims are found to be patentable for reasons unrelated to prior art, for example, evidence of secondary considerations, citing new prior art for these claims may prove difficult as the Board, in this case, refused to reconsider the evidence of secondary considerations because prior art and arguments presented were the same or substantially the same as those previously presented to the Office.