One issue commonly raised by a patent owner in their Preliminary Response is the Board’s ability to deny institution because the petitioner’s proposed grounds are premised on prior art previously considered by the U.S. Patent and Trademark Office. The patent owner argues that the prior art at issue was previously raised during prosecution, in a reexamination, or in a prior petition for inter partes review of the challenged patent. Under 35 U.S.C. § 325(d), the Board has discretion to deny a petition where it is based on arguments and prior art already seen at the PTO:
“In determining whether to institute or order a proceeding … 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.” 35 U.S.C. § 325(d).
Despite many efforts by patent owners to invoke the Board’s authority under § 325(d), the Board has routinely declined to use this discretion to deny a petition. See Fresenius-Kabi USA LLC v. Cubist Pharm., Inc., IPR2015-00223, Paper 13, 14 (PTAB May 14, 2015); Actifio, Inc. v. Delphix Corp., IPR2015-00100, Paper 7, 27-28 (PTAB May 14, 2015); Customplay, LLC v. Clearplay, Inc., IPR2013-00484, Paper 10, 16 (PTAB Nov. 26, 2013); Macauto U.S.A. v. BOS GMBH & KG, IPR2012-00004, Paper 18, 19 (PTAB Jan. 24, 2013); Merial Ltd., v. Virbac, IPR2014-01279, Paper 13, 9 (PTAB Jan. 22, 2015); Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., IPR2014-00607, Paper 17, 15 (PTAB Sept. 11, 2014); Global Tel*Link Corp. v. Securus Tech., Inc., IPR2014-01283, Paper 10, 16 (PTAB Feb. 20, 2015); Nestle USA, Inc. v. Steuben Foods, Inc., IPR2014-01235, Paper 12, 7 (PTAB Dec. 22, 2014); Permobil, Inc. v. Pride Mobility Prods. Corp., IPR2013-00407, Paper 13, 9 (PTAB Jan. 2, 2014). The Board has noted that it is “not required by statute to reject a petition based upon the fact that certain arguments or art were previously considered by the Office.” Micron Tech., Inc. v. Bd. of Trs. of the Univ. of Ill., IPR2013-00005, Paper 19, 7 (PTAB Mar. 12, 2013).
Among reasons for instituting a proceeding over a Patent Owner’s § 325(d) objection, the Board has cited differences between patent prosecution, ex parte reexaminations, and inter partes reviews, including: differences in the factual record (Macauto at 19, Micron at 7), differences in the burden of proof and rules of evidence (Merial at 9), differences in arguments and supporting evidence regarding the same prior art (Permobil at 9), differences in the combinations of the same prior art (Medtronic at 15), differences in the level of detail provided to the PTO (Actifio at 27-28), and the inclusion of an expert declaration (Nestle USA at 7).
The Board has additionally shown a willingness to ignore or even explicitly overturn findings made by an Examiner during prosecution. See Macauto at 17 (“[w]e have reviewed the declarations and agree with Petitioner that they should not have been given determinative weight by the Examiner”); Customplay at 16 (“while the examiner’s analysis is helpful, it is not binding on this proceeding”).
In certain narrow circumstances, the Board has denied a petition by exercising its discretion under § 325(d). First, the Board has used § 325(d) to deny a later petition which is substantially the same as a previously denied petition. For example, in ZTE Corp. v. ContentGuard Holdings, Inc., the Petitioner failed to obtain institution on a first Petition and later brought a second Petition which used the same primary references and added new prior art to shore up the deficiencies of the first Petition. ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00454, Paper 12 (PTAB Sept. 25, 2013) (informative opinion). The Board denied the second Petition, citing a “concern[] about encouraging, unnecessarily, the filing of petitions which are partially inadequate.” Id. at 6. See also Unilever, Inc. v. Procter & Gamble Co., IPR2014-00506, Paper 17 (PTAB Jul. 7, 2014) (informative opinion); Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487, Paper 8 (PTAB Sept. 11, 2014) (informative opinion).
Second, the Board has denied petitions under § 325(d) to prevent duplicative proceedings, such as where similar petitions are filed by separate parties, Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., IPR2014-00436, Paper 17 (PTAB Jun. 19, 2014) (informative opinion), or where nearly identical petitions are filed by the same party with prior art substitutions, Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00324, Paper 19 (PTAB Nov. 21, 2013) (informative opinion).
Finally, the Board has used § 325(d) to address unusual fact patterns which would result in duplicative effort by the PTO or unfairly prejudice a patent owner. See Prism Pharma. Co., Ltd. v. Choongwae Pharma. Corp., IPR2014-00315, Paper 14 (PTAB Jul. 8, 2014) (informative opinion) (denying petition alleging lack of written description based on PTO’s previous consideration, during prosecution of the patent, of petitioner’s declaration alleging lack of written description); Merial Ltd., v. Virbac, IPR2014-01279, Paper 13, 26-27 (PTAB Jan. 22, 2015) (denying petition on one proposed ground due to petitioner’s failure to present evidence addressing a finding of unexpected results during prosecution, where such failure would unfairly impose on the patent owner the burden of establishing unexpected results at trial).
Although the Board is reluctant to deny petitions using § 325(d), Petitioners still need to be cognizant of this issue and should take precautionary measures when drafting a petition. Such precautionary measures are especially important when challenging a patent which was subject to a long prosecution history or prior post-grant reviews and reexaminations. Minor changes to the combinations of prior art, the arguments used in conjunction with each prior art reference, or even the use of an expert declaration will usually suffice to survive a § 325(d) challenge.