United States: Recent PTAB Decisions Further Illuminate Denial Of Review Under 35 U.S.C. § 325(D)

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.

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