In three recent cases, the Patent Trial and Appeal Board (PTAB) addressed arguments pertaining to when and how it should exercise its discretion to deny some or all grounds for unpatentability in an inter partes review (IPR) where the petition relies on prior art disclosed during earlier prosecution of the challenged patent. In deciding whether to institute, the PTAB exercised its discretion under 35 USC § 325(d) where the prior art was not only disclosed during examination, but was also used by the Examiner to reject the claims in an office action. Edwards Lifesciences v. Boston, Case No. IPR2017-00072, Paper 8 (PTAB, Apr. 21, 2017) (Tartal, APJ). However, the PTAB declined to exercise its discretion where the prior art was submitted during prosecution but not relied upon by the Examiners to reject claims. Scientific Fox Factory v. SRAM, Case No. IPR2017-00472, Paper 10 (PTAB, Apr. 21, 2017) (Cherry, APJ); Digital Check v. e-ImageData, Case No. IPR2017-00178, Paper 6 (PTAB, Apr. 25, 2017) (Haapala, APJ).

In relevant part, § 325(d) states that “[i]n determining whether to institute or order a proceeding under this chapter . . . 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 Edwards Lifesciences v. Boston, the PTAB exercised its discretion to deny institution because the primary reference relied upon by the petitioner was not only disclosed to the patent office during examination of the patent, but was also used to reject the claims in an office action, which the applicant overcame. In addition, the PTAB found that the secondary references relied on in the petition were either disclosed to the patent office during examination or only disclosed ubiquitous features known in the prior art. The PTAB therefore found that the petitioner relied upon the same or substantially the same information that was considered during prosecution of the patent.

The PTAB reached a contrary conclusion in Scientific Fox Factory v. SRAM, where it declined to exercise its § 325(d) discretion and instituted an IPR trial. Even though the petition relied on prior art that was cited during prosecution and re-examination, the Examiner apparently gave these references no more than a cursory review during the original prosecution of the patent and, although these references were also of record in a subsequent re-examination, that re-examination had not concluded. The PTAB therefore found that the IPR petition did not rely on the same or substantially the same information that was considered during the prosecution that resulted in allowance of claims.

Similarly, in Digital Check v. e-ImageData, the PTAB declined to exercise its § 325(d) discretion and instituted an IPR trial even though petitioner relied on prior art that was cited during prosecution. In this instance, the PTAB found no indication in the record that the Examiner rejected any claims based on either reference relied on in the petition or that the Examiner or applicant substantively discussed either reference during prosecution of the patent. Furthermore, the petitioner’s obviousness challenge also relied on witness testimony that was not previously submitted during prosecution. The PTAB therefore found that the IPR petition did not rely on the same or substantially the same information that was considered during prosecution of the patent.