The Patent Trial and Appeal Board (PTAB or Board) designated as informative three decisions denying institution of inter partes reviews. CULTEC, Inc. v. Stormtech LLC, Case No. IPR2017-00777 (Grossman, APJ) (Aug. 22, 2017); Hospira, Inc. v. Genentech, Inc., Case No. IPR2017-00739 (Pollock, APJ) (Jul. 27, 2017); Unified Patents Inc. v. John L. Berman, Case No. 2016-01571 (Haapala, APJ) (Dec. 14, 2016). In each decision, the PTAB denied institution based on its discretionary power under 35 USC § 325(d) because the same or substantially the same prior art or arguments previously had been presented to the US Patent and Trademark Office.

In CULTEC, the petitioner asserted five obviousness grounds of unpatentability against the challenged patent. Each ground was based on the same primary prior art reference either alone or in various combinations with three other references. The PTAB panel observed that the primary reference was submitted during original prosecution of the challenged patent by petitioner’s lead counsel in a third-party prior-art submission. The PTAB panel further noticed that one of the petitioner’s secondary references had been cited and applied by the examiner throughout prosecution of the application for the challenged patent. Finding that the petitioner cited the two remaining references for teaching the same subject matter as the first two references, the PTAB panel denied institution under § 325(d).

In Hospira, the petitioner alleged that the challenged patent was not entitled to its putative priority date and was consequently anticipated by each of three prior publications. During prosecution of the challenged patent, the examiner had similarly rejected the pending claims as being anticipated by the earliest of the petitioner’s three references and likewise disregarded the application’s earliest priority claim, in the same way the petitioner had. Specifically, in the examiner’s initial rejection of the challenged claims, the examiner found that the earlier applications in the challenged patent’s priority chain failed to satisfy the written description and enablement requirements under 35 USC § 112. The PTAB panel noted that the applicant overcame the examiner’s initial rejection by argument and amendment of the claims, causing the examiner to withdraw the rejection based on the earliest prior art reference since it was not prior art against the challenged patent. Because the other two references relied on by the petitioner had later publication dates, they also were not prior art against the challenged patent. As the petitioner had not raised any other arguments, the PTAB panel denied institution under § 325(d). 

In Unified Patents, the petitioner asserted that the challenged claims were invalid based on three grounds of obviousness. Two of the petitioner’s grounds relied on a primary reference that the Patent Owner overcame during prosecution. For those grounds, the PTAB determined that the petitioner’s secondary reference was relied on in the same way as references used by the examiner during prosecution. Because the PTAB panel discerned nothing that distinguished the petitioner’s arguments from the examiner’s prior consideration of the primary reference, the PTAB declined to institute review based on those two grounds, concluding “[t]his would not be an efficient use of PTAB resources in this matter.” Significantly, the PTAB treated the petitioner’s third ground differently, since the petitioner relied on a secondary reference not considered during prosecution, in order to teach certain claimed subject matter. Addressing the third ground on the merits, the PTAB found that the petitioner had failed to adequately explain how the combined teachings of the prior art rendered the challenged claims obvious.  

Practice Note: These three informative decisions notify prospective petitioners that the PTAB is very reluctant to set aside any determination made by an examiner during prosecution unless a petitioner presents new evidence or arguments that would convince the PTAB that the examiner’s earlier determination was unreasonable.