By now, most PTAB practitioners are familiar with 35 U.S.C. § 325(d), which gives the Board the authority to deny institution of a post-grant proceeding because the same or substantially the same prior art or arguments were previously presented to the Office. You can find a myriad of such decisions on our blog.
In the typical 325(d) situation, the Board denies institution because the petitioner presented arguments that the Office considered during the original prosecution of the patent-at-issue, or that the Office considered in another post-grant proceeding. Typically, the prior proceeding on which the Board based its 325(d) denial involved the same patent being challenged in the current petition. In a recent decision, however, the Board went further and based a 325(d) denial on a previous proceeding regarding a different, but related, patent.
In PGR2017-00038, the petitioner challenged claims 1-19 of U.S. Patent No. 9,466,035 on both Section 101 and 103 grounds. The petitioner did not identify any related matters in the petition, but the Patent Owner did. In its Rule 42.8 Mandatory Notices, the Patent Owner identified related U.S. Patent No. 9,639,811, which claims priority to the ’035 patent. In its Preliminary Response, the Patent Owner argued that the Board should deny all three proposed grounds because the Office had considered and rejected the same arguments during prosecution of the ’811 patent.
Specifically, the Patent Owner argued that in the related ’811 patent an unknown third party had filed a Preissuance Submission under 35 U.S.C. § 122(e) (“Submission”) presenting the same art and arguments raised in the PGR petition. The Patent Owner requested denial under 325(d), even though the arguments were previously considered during prosecution of a patent different from the patent at issue in the PGR. The Board agreed.
The Board compared both the Section 101 and 103 grounds presented in the ’035 PGR petition to the previous Submission in the ’811 patent prosecution and found that the art and arguments were “extremely similar.” They also found that the ’035 and ’811 claims are “very similar,” and analyzed the few differences. The Board further noted that the petitioner had apparently copied material from the Submission into the petition. Based on these facts, the Board concluded that Section 325(d) applied and denied the petition in its entirety.
In this decision, the Board seems to be expanding the scope of 325(d) by considering whether arguments made in a petition had been previously considered by the Office in a proceeding relating to a patent different from the patent-at-issue. Section 325(d) says that the Board has discretion to deny institution if “the same or substantially the same prior art or arguments previously were presented to the Office.” This language, on its face, does not require that the previous consideration be in relation to the patent-at-issue.