This blog has previously explained on July 23, 2015, December 10, 2015, and December 16, 2015 why it is important for parties to AIA trials to carefully consider the patent prosecution history. Under 35 U.S.C. § 325(d), the Board has discretion to deny an AIA trial if “the same or substantially the same prior art or arguments previously were presented to the Office.” The Board recently exercised that discretion in denying an inter partes review petition and, in doing so, provided yet another warning to petitioners: do not waste the Board’s time presenting in a petition prior art and arguments that were already considered during prosecution, and be sure to address deficiencies in prior art combinations the patentee overcame during prosecution. Drug Prices for Consumers, LLC v. Forest Labs. Holdings Ltd., Case IPR2016-00379, Paper 14 (PTAB July 1, 2016).

…another warning to petitioners: do not waste the Board’s time presenting in a petition prior art and arguments that were already considered during prosecution, and be sure to address deficiencies in prior art combinations the patentee overcame during prosecution.

The petition sought the Board’s review to cancel claims 1-6 of U.S. Patent No. 6,545,040 as being obvious over numerous publications. The patent claims are generally directed to a class of isomers of 2,2ꞌ-iminobisethanol derivatives having β-adrenergic blocking properties that potentiate the activity of blood pressure-reducing agents and, in particular, more effectively reduce blood pressure and heart rate. During prosecution, the Patent Office examiner repeatedly rejected application claims as obvious over the same primary publication on which the petition relies. The applicant was unable to persuade the examiner to withdraw the rejection despite evidence of unexpected results. The rejection was ultimately reversed on appeal in view of that evidence and in view of deficiencies in the examiner’s reasoning.

In its IPR petition, the petitioner presented essentially the same arguments the examiner presented during prosecution. In denying IPR, the Board noted that the petition was silent as to the deficiencies the earlier Board panel noted in the examiner’s arguments:

Because Petitioner has not addressed these issues, we are not inclined to reconsider the Board’s prior decision. Accordingly, under the facts and circumstances of this case, we find that readjudicating substantially the same prior art and arguments as those presented during prosecution would not be an efficient use of Board resources. [Paper 14, p.12]

This decision may serve as a reminder that perhaps the strongest petitions will rely on prior art that the Patent Office has not previously considered. Petitions that rely on prior art that the Patent Office has considered should present arguments and evidence that address whatever deficiencies the Patent Office previously noted.