The Patent Trial and Appeal Board (“PTAB”) at the United States Patent and Trademark Office has recently designated as “Informative Opinions” several decisions that shed light on the approach used to determine whether an inter partes review will be instituted. While these decisions apply the new “reasonable likelihood that the petitioner would prevail” standard of the Leahy–Smith America Invents Act, they suggest that the PTAB will also be guided by the “substantial new question of patentability” standard that previously controlled in reexamination proceedings. A petitioner must demonstrate a reasonably likelihood that it will prevail — but the petitioner who relies on previously offered argument will likely be doomed from the start.

Statutory Background

Among other changes, the America Invents Act changed the threshold standard for instituting a post-grant challenge to the validity of a patent. Prior to the adoption of the act, the standard for whether to institute an inter partesreexamination provided that:

[T]he Director shall determine whether a substantial new question of patentability affecting any claim of the patent concerned in raised by the request, with or without consideration of other patents or printed publications. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.1

Whether the challenge raised a “substantial new question of patentability” was the touchstone of the previous analysis.

The America Invents Act replaced inter partes reexamination with inter partes2review and provided a different standard for its institution under Section 314(a):

[T]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.3

It is no longer sufficient to demonstrate that the challenge raises a “new” question — the petitioner must demonstrate the underlying merit of the challenge. Courts around the country have recognized that this presents an elevated or more stringent standard than the previous requirement for inter partes reexaminations.4

While Chapter 31 — which governs inter partes review — does not explicitly refer to a “substantial new question of patentability,” Chapter 32 does include similar language. This chapter specifically governs the related post-grant review proceeding.5 However, it includes Section 325(d), a broadly applicable provision that “[i]n determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, 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.”6

Sections 314(a) and 325(d) provide two important guidelines. Section 314(a) contains mandatory language that the Director “may not authorize an inter partes review” unless he or she determines there is a reasonable likelihood that the petitioner will prevail. Section 325 contains permissive language that the Director “may take into account” whether the prior art and argument is substantially the same when deciding whether to authorize the review.

Lessons Learned

Several recent decisions by the PTAB denying requests for inter partes review suggest that the PTAB is likely to accord special weight to the fact that a petition relies on prior art that is substantially the same as art that has been (or could have been) previously considered, or other circumstances where the petitioner does not raise “new” questions of patentability.

Petitions that Are Cumulative to the Original Prosecution

In one recent example, the PTAB denied a petition that was cumulative to the original prosecution.7 The petition was brought by a company co-founded by one of the co-inventors of the challenged patent.8 This co-inventor had been hostile to the patent owner since the original prosecution of the patent — during the original prosecution, he sent to the patent owner declarations disputing the patentability of the claims.9 The patent owner submitted these to the Patent Office under its duty of disclosure but was still able to obtain certain claims.10

In the petition for inter partes review, the co-inventor’s company submitted the same prior art and substantially the same argument that he had provided to the patent owner during the original prosecution.11 In exercising its discretion under Section 325(d) and denying the petition, the PTAB noted that the original examiner was aware of these issues but had already determined that the claims were allowable.12

This decision demonstrates that the PTAB does not only consider previous petitions for inter partes review but may also consider the original prosecution history. A petitioner attempting to introduce new prior art and argument must also take care to ensure that it does not simply repeat a position that the original examiner already considered and rejected. This provides the PTAB with an easy way to deny the petition.

Petitions Based on the Same Prior Art

The PTAB has also exercised its discretion under Section 325(d) to deny a petition that asserted substantially the same prior art and argument as a previous petition (for which an inter partes review had been instituted).13 The Petitioner filed the second petition after it acquired the party that filed the previous petition.14 The PTAB noted that the second petition presented the same argument with respect to the same prior art reference. The PTAB also noted that the petitioner of the second petition was a real party-in-interest in the original inter partes review, which the PTAB has also found relevant in denying other petitions (see section on “Repetitive Petitions by the Same Party” below).15

This decision reflects the fact that the PTAB is willing to exercise its discretion under Section 325(d) to deny petitions that repeat previously argued grounds for rejection. While Section 325(d) is permissive, a petitioner must be careful because it provides an easy way for the PTAB to deny a petition that is otherwise likely to succeed on the merits. Any subsequent petition should identify new art or argument that was not previously presented and explain how this raises new questions that are likely to succeed.

Petitions Attempting to Address Deficiencies

In a similar situation, the PTAB denied a petition that sought review of a patent for the third time.16 The PTAB had granted the petitioner’s first petition but denied its second.17 The petitioner argued that its third petition responded to “a noted deficiency” in the previously-denied petition and that the grounds of the third petition were not redundant to the granted petition because they were based on different prior art references and arguments.18

The PTAB was not persuaded by these arguments. It noted that the petitioner did not “provide specific reasoning” to support its argument that the third petition was not redundant to the granted petition other than to state that the prior art references are different.19 The PTAB also noted that the third petition presented the same prior art that had been previously presented in the rejected petition and that the proposed challenges to the claims were “nearly identical.”20 As a result, the PTAB exercised its discretion under 35 U.S.C. § 325(d) and denied the third petition.

This decision emphasizes the basic principal that a petition seeking inter partesreview should present new prior art and argument to increase the likelihood that it will be granted. Although the decision does not create a per se rule against relying on the same prior art references, a petitioner that repeats a previously used reference should provide explicit reasons why the new petition warrants an additional look at that reference. Conclusory statements that the reference or argument is new are unlikely to be successful.

Petitions Based on Prior Art that Could Have Been Asserted

The PTAB has gone a step further under Section 325(d) and denied a second petition even where it introduced new prior art.21 Here, the petitioner had filed a first petition that was granted in part and denied in part22 and then filed a second petition that challenged the claims for which review had been denied.23

The PTAB rejected the second petition under Section 325(d) on the basis that it presented the “same or substantially the same prior art” as the first petition.24Although only six of the thirteen prior art references identified in the second petition had actually been raised in the first petition,25 the PTAB explained that the petitioner “presents no argument or evidence that the seven newly cited references were not known or available to it at the time of the filing of the [first] petition.”26

The PTAB did not provide any analysis why these references were “substantially the same” as the references that had been previously presented. Instead, it placed the burden on the petitioner to explain that the newly cited references were not known at the time of filing the first petition. Such an explanation would have to establish that the new references were not cumulative to the references that had already been presented.

Duplicative Petition by a New Party

The PTAB has also denied a petition that addressed a patent already subject tointer partes review even where the petitioner had not filed the earlier petitions.27Although the petitioner had not previously filed a petition concerning this patent, several third parties had (two of which had been granted).28 The Patent Owner argued in opposition to the petition that multiple, overlapping petitions based on the same prior art should not be instituted for the single patent.29

The PTAB agreed. It recognized that its decision meant that the latest petitioner who had filed the current petition would not have the opportunity to submit argument or evidence concerning that patent, but on the balance, it determined that there were sufficient reasons to deny the petition anyway.30 It noted that most of the challenged claims had already been found unpatentable and that the new petition would be moot if the Federal Circuit upheld the rejections.31 It also noted that the current petition challenged claims that were already subject to another pending inter partes review and the petitioner of thatinter partes review had already demonstrated a reasonably likelihood that it would prevail.32 The PTAB concluded that the interest in efficient administration of the Patent Office warranted denying the current petition.33

This decision is a reminder that the requirement of providing new prior art and argument does not only apply to the petitioner’s previous arguments but also to other petitioners’ arguments. This decision also suggests that the PTAB may begin enforcing this standard more strictly. At the time of this decision, the PTAB had already instituted two inter partes reviews of the same patent based on the same prior art. That may be less likely in the future.

Practice Points

These decisions demonstrate a trend at the PTAB of more rigorously considering whether a petition for inter partes review simply rehashes a previously considered argument or presents a new challenge that warrants the use of the Patent Office’s time and resources. While the “substantial new question of patentability” requirement of the old inter partes reexamination standard was replaced by the America Invents Act, this may remain a de factorequirement in addition to the requirement of establishing a reasonable likelihood of success as required by Section 314(a).

A challenger should be careful to file a petition that relies on new evidence and argument. The challenger also should clearly explain how the evidence and argument is new. The failure to provide an explicit explanation could result in the denial of an otherwise meritorious petition with little to no recourse. And if the challenger has already filed a petition, special care should be taken to explain why the new prior art and argument raises issues that were not previously raised — and could not have been previously raised — by the previous petition. In situations with multiple defendants or potential challengers, the potential challengers should coordinate to avoid filing multiple repetitive petitions that create these obstacles for each other.

Conversely, a patent owner facing a petition to institute inter partes review of one of its patents should carefully compare the arguments raised in the petition against any previous challenge, including prior art considered by the original examiner. The patent owner may be able to foreclose a costly inter partesreview by urging the PTAB to exercise its discretion under Section 325(d) and deny a duplicative or cumulative petition.