Recently, the Patent Trial and Appeal Board (“PTAB”) denied grounds in petitions under 35 U.S.C. § 325(d) because the prior art and arguments relied on in the petitions were substantially similar to those presented during prosecution of the patents at issue.

For example, in Kayak Software Corp. v. IBM Corp. CBM2016-0075, Paper 16 (Dec. 15, 2016), the PTAB declined to institute a covered business method (CBM) petition under § 325(d).

In their Petition, the Petitioners used the exact combination of references that had been applied by the USPTO Examiner. The Petitioners also introduced a new reference not previously cited during prosecution as an additional means to demonstrate the unpatentability of U.S. Patent No. 7,072,849.

In denying the CBM petition, the PTAB relied on § 325(d) as “the same or substantially the same prior art or arguments previously were presented to the Office.” In reaching its decision, the PTAB reasoned that the applied prior art had been cited “exhaustively” and considered “extensively” during prosecution. The PTAB stated “there could be situations where, for example, the prosecution is not as exhaustive, where there are clear errors in the original prosecution, or where the prior art at issue was only cursorily considered that can weigh against exercising discretion.” The PTAB concluded that “if the Petitioner had brought forward and explained some specific circumstances that have materially changed or of which the Office was not aware of during the prior consideration of the prior art and arguments at issue … then those could weigh in favor of institution,” but the “Petitioner, however, has not articulated such circumstances in this case.”

With respect to the new reference, the PTAB concluded that it was merely included to meet the requirements of subject matter recited in the dependent claims. Therefore, the PTAB held any corresponding arguments resulting from the new reference would be substantially similar to arguments already put forth by the Examiner during prosecution.

Similarly, in another decision—Apotex Inc. v. OSI Pharmaceuticals, IPR 2016-01284, Paper 8 (Jan. 9, 2017)—the PTAB denied institution of a ground presented in inter partes review (IPR) petition to U.S. Patent No. 6,900,221 (“the ‘221 patent”) again under § 325(d). In denying that ground, the PTAB determined that the anticipatory art and arguments had already been sufficiently considered during prosecution.

These decisions follow a series of decisions in which the PTAB has exercised its discretion to deny a petition under § 325(d) based on the positions previously taken during ex parte proceedings such as during patent prosecution or reexamination. In the past, the PTAB has looked at a number of factors to assist with its determination whether to use its § 325(d) discretion. First, the PTAB seems to require that at least substantially similar prior art and arguments be previously presented in the ex parte proceeding. Second, there must be clear evidence in the record that the USPTO reviewed the prior art and arguments. And third, the Board may be persuaded that the Petitioner presents a unique role in the proceedings and that IPR should be instituted. A further discussion of these factors can be found in Trends in IPR Institution: Part 1 – Ex Parte Art or Arguments.

The significance of these PTAB decisions is not understated. Before filing a petition relying on previously presented prior art and arguments, petitioners should explicitly articulate the clear errors in the original prosecution or show that the prior art at issue was only cursorily considered. Without such analysis, petitioners run the risk of having the petition denied under § 325(d), thus redounding to the benefit of patent owners.