The Board recently denied a post grant review petition because the challenge was deemed redundant of the Patent Office's earlier examination of similar claims in a related application. Live Nation Entertainment, Inc. v. Complete Entertainment Resources B.V., Case No. PGR2017-00038 (PTAB January 16, 2018). The decision offers a cautionary tale for patent practitioners. The Board learned of the earlier examination from the patent owner, not the petitioner who was obliged to advise the Board of "related matters."
The patent challenged in the petition is directed to a system for reducing the unfair advantage in ticket purchases achieved by automated ticket purchasing software. The claimed system prioritized ticket purchasers based on purchaser behavior, such as social media account history and other data. The concept has received recent media coverage due to Taylor Swift's decision to offer presale tickets for her Reputation tour to fans identified by their purchasing and online activity and then to later offer general sale tickets at a higher price so as to cut into scalper's margins. (https://www.bloomberg.com/news/articles/2018-01-31/taylor-swift-wants-her-money-back).
A continuation application was filed with respect to the parent application that led to issuance of the challenged patent. During prosecution of this continuation application, an unknown third party filed a Pre-issuance Submission pursuant to 35 U.S.C. §122(e) and 37 C.F.R. §1.290. The continuation application ultimately issued following consideration of the third party submission.
The petitioner was under a duty under 37 C.F.R. §42.8(b) to "identify any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding." Nonetheless, the petitioner craftily claimed to be aware of no other matters involving the challenged patent—strategically failing to mention the child patent or the third party submission. The patent owner informed the Board of the third party submission. The Board noted that the petitioner was undeniably aware of the third party submission because it copied portions of the third party submission—including an error in the third party submission—directly into the petition.
As in the third party submission, the petitioner argued that the claims of the challenged patent were ineligible for patenting under 35 U.S.C. §101. The Board compared the claims of the challenged patent to the claims of the child patent and determined that they were similar in scope. The Board noted that the petitioner had not identified any differences between the claims in the challenged patent and the claims in the child patent, and thus concluded that petitioner's patent-ineligibility arguments were substantially the same as those previously presented during prosecution of the child patent—arguments the Office had concluded were not persuasive.
Turning to the petitioner's obviousness arguments, the Board noted that the petitioner's primary reference was relied upon extensively in the third party submission and that the examiner of the continuation application had concluded that it did not anticipate or render obvious any claim of that application. The petitioner sought to assert two references additional references not considered by the examiner in the continuation application. Finding that only one of the two additional references was alleged to cure deficiencies the examiner had found in the primary reference, the Board observed that the petition lacked an explanation for why a person of ordinary skill in the art would have combined this additional reference with the primary reference. Accordingly, the Board found that the petitioner's obviousness challenges were the same or substantially the same as those earlier presented and rejected by the examiner during prosecution of the child patent.
Here, patent practitioners who never ever ever want to end up with the result in this case should keep these key points in mind. First, petitioners must be diligent in researching and identifying in the petition all pending applications within the same family of the patent. Second it's a waste of petitioner's resources to file a petition recycling the same arguments the Office already determined to have no merit. If at first you don't succeed, don't just try again; instead, shake it off and craft a new, stronger argument. A petitioner that fails to follow these points will create bad blood with the Board.
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