Square Inc. v. Protegrity Corp.; Actifio Inc. v. Delphix Corp.; 

Addressing the issue of what constitutes the “same or substantially the same” prior art or arguments, the Patent Trial and Appeal Board (PTAB or Board) chose not to exercise its discretion to deny two separate covered business method (CBM) petitions. Square Inc. v. Protegrity Corp., Case No. CBM2015-00014 (PTAB, May 4, 2015) (Turner, ALJ); Actifio Inc. v. Delphix Corp., Case No. CBM2015-00100 (PTAB, May 14, 2015) (Scanlon, ALJ).

The petitioners in both proceedings argued that the Board should exercise its discretion under 35 U.S.C. § 325(d) and decline to institute the proceedings because “the same or substantially the same prior art or arguments previously were presented to the Office.” The petitioners relied on the fact that the prior art references were considered during prosecution, during reexamination, and/or during a previous covered business method patent review. The Board was not persuaded.

In Actifio Inc. v. Delphix Corp., the Board noted that the materials previously presented to the U.S. Patent and Trademark  Office regarding the prior art system were only brochures, which lacked the level of detail presented in the CBM petition and the incorporated references. Separately, in Square Inc. v. Protegrity Corp., the Board found that arguments during a previous CBM review would not be considered as the same or substantially the same because that previous proceeding settled before the Board issued a final ruling. In addition, the Board found that the petitioner raised different arguments with respect to the patents and articles than those presented during the prosecution and reexamination of the subject patent. For these reasons, the Board found both patents eligible for CBM review.

Practice Note: While the Board has shown a willingness to deny petitions that raise the same or substantially the arguments in a CBM orinter partes review (IPR) proceeding, the Board appears more reluctant to deny a petition based on allegations that the same or substantially the same prior art is asserted. See Conopco Inc. dba Unilever, v. The Procter & Gamble Company (IP Update, Vol. 18, No. 4).