Client Alerts | 11/01/2017

New PTAB “Informative” Decisions Support Denial of Institution When Grounds Were Considered Previously

Team Contact: Sangeeta Shah

  • inter-partes-review

The USPTO Patent Trial and Appeal Board recently designated three decisions as “informative” under the Board’s procedures. Informative decisions are not binding authority, but contain examples of PTAB norms on recurring issues, provide guidance on issues of first impression, or provide guidance on PTAB rules and practices. See PTAB Standard Operating Procedure No. 2 (Rev. 9, Sept. 22, 2014). The three decisions designated as informative illustrate the Board’s practices in declining to grant petitions to institute inter partes review under 35 U.S.C. § 325(d) when a petition relies on grounds already considered by the examiner.


When a party files a petition for review challenging the patentability of one or more claims in an issued patent, the PTAB initially determines whether to institute proceedings. In IPR proceedings, the Board institutes review if the petitioner demonstrates that a reasonable likelihood exists that it will prevail with respect to at least one challenged claim. 35 U.S.C. § 314(a). In addition, 35 U.S.C. § 325(d) states that the Board may decline to institute trial proceedings if the issues raised in a petition are duplicative of matters already considered by the USPTO:

In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, 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.

Hospira, Inc. v. Genentech, Inc., IPR2017-00731 (July 27, 2017)

In the first decision to be designated as informative, the petitioner challenged the patentability of claims in U.S. Patent No. 7,846,441, relating to treatment of medical disorders associated with the overexpression of a human gene related to epidermal growth factor. The petition argued that the claims were obvious based on the combination of a Baselga ’94 and Baselga ’97 reference.

The Board ruled that the Baselga ’97 reference had been considered during the original examination of the patent. After reviewing the prosecution history of the ‘441 patent, and noting that the examiner withdrew a rejection based on Baselga ’97 after the applicant submitted two Rule 131 declarations, the Board noted that:

Institution of an inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but never compelled, to institute an IPR proceeding”). Under 35 U.S.C. § 325(d), in determining whether to institute an inter partes review, we “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 this case, . . . the examiner withdrew the rejection based on Baselga ’97, stating that “[t]he declaration filed on 5/07/2001 under 37 C.F.R. § 1.131 is sufficient to overcome the Baselga (1997).” Petitioner does not present additional evidence or persuasive arguments in this proceeding for us to reach a different conclusion with respect to Baselga ’97. Under these circumstances, we exercise our discretion under § 325(d) and decline to institute inter partes review based on the combination of Baselga ’97 and Baselga ’94.

Slip op. at 7-8 (citation omitted).

Unified Patent, Inc. v. Berman, IPR2016-01571 (Dec. 14, 2016)

The petitioner challenged multiple claims of U.S. Patent 5,523,791, which discloses technology for superimposing images over scenes displayed on a television. The petition listed three obviousness grounds for unpatentability. Two of the grounds were based on a Russell reference alone or in view of an Intel User’s Manual, and the third ground was based on the combination of the Russell reference and a Marlton reference. The PTAB declined to institute on the first two grounds, but did institute review on the third.

In assessing the patent owner’s objection that the USPTO already had considered the grounds presented in the petition, the PTAB noted that “before we decide whether we should exercise our discretion to deny institution for one or more grounds, we first must determine whether any of the grounds asserted in this Petition present the ‘same or substantially the same prior art or arguments’ as those previously presented to the Office.” Slip op. at 9. The PTAB reviewed the ‘791 patent prosecution history and noted that following an interview the examiner indicated the claims were “allowable over the prior art of record,” including the Russell reference.

In addition, the PTAB concluded that the Intel User’s Manual reference, although not cited during examination, duplicated the disclosure in Russell reference, and that the petitioner “relies on Intel User’s Manual in substantially the same manner as the Examiner used Russell” during examination. Id. at 11. As a result, the PTAB ruled:

We conclude that the Petition relies on the same or substantially the same prior art and arguments presented previously to the Office for the grounds challenging claims 2–8 and 10–15 over Russell alone, or in combination with Intel User’s Manual. We further determine that it is appropriate to exercise our discretion to deny institution of these grounds. Petitioner acknowledges the Examiner specifically used Russell to reject the original claims. Petitioner further acknowledges that Applicant added the new claims (ultimately resulting in the issued claims) in response to the Office Action in which the rejection over Russell was pending. Nevertheless, Petitioner fails to present any argument distinguishing the Examiner’s prior consideration of Russell or to provide a compelling reason why we should readjudicate substantially the same prior art and arguments as those presented during prosecution and considered by the Examiner. This would not be an efficient use of Board resources in this matter.

Slip op at 12 (record citations omitted)(emphasis added). The Board did not decline to institute review of claims challenged based on the combination of the Russell and Marlton references under § 325(d), however, since “Marlton does not appear on the face of the patent in the list of references cited during prosecution. Nor does Patent Owner assert that Marlton, or prior art substantially the same as Marlton, was considered previously[.]” Slip op. at 13. The Board considered that ground on the merits, and declined to institute because the petitioner failed to demonstrate that it was likely to succeed on its challenge.

Cultec, Inc. v. StormTech LLC, IPR2017-00777 (Aug. 22, 2017)

The third decision designated as informative concerned a challenge to U.S. Patent No. 9,255,394, relating to a storm water management system using an underground chamber. The petitioner challenged the ‘394 patent claims for obviousness based on five grounds. Each ground included a Cobb reference, either alone or in combination with other references.

The PTAB noted that the Cobb reference had been submitted during examination through a third-party submission filed by the same practitioner that represented the IPR petitioner. The third-party submission disclosed that the Cobb reference also had been cited in a different, but related application. That application and the ‘394 patent application both were continuations of the same parent application, and claimed priority to the same provisional application, with the same examiner.  In the related application, the examiner evaluated the Cobb reference. The examiner also considered the third-party submission disclosing Cobb. Furthermore, the third-party submission included a claim chart applying Cobb to the pending claims, and an expanded version of the chart was included in the IPR petition.

As result, the PTAB declined to institute under § 325(d), concluding that “the substantive disclosure of Cobb and arguments why claims in the ’503 application that matured into the ’394 patent were not patentable based, in substantial part, on Cobb previously were presented to the Office in the Third Party Submission.” Slip op. at 11.

In addition, the PTAB ruled that the additional references cited in the petition either were considered by the examiner during prosecution of the ‘394 patent, or disclosed only matter considered by way of the Cobb or other cited references. Thus, the Board ruled that “the same or substantially the same prior art or arguments as are presented in the Petition previously were presented to the Office in the Third Party Submission.”

Practical Significance

Patent Owners should now rely on Section 325(d) as a basis for denying institution of a ground where the underlying arguments or art were considered by the Office in original prosecution. This expanded view of 325(d)—exemplified by the three informative decisions– show that the Board views this consideration a valuable mechanism to conserve its resources, and may use it even when a petition cites references different from those considered during examination. Thus, a reference that is cumulative of a reference already considered, or is used by the petitioner for the same purpose as a previously-considered reference, may be viewed as presenting “the same or substantially the same prior art or arguments,” supporting a decision not to institute review.

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