IP Alerts

IP Alert
IP Alert: PTAB Tends to Disallow a Second Bite at the Apple

September 30, 2014

The Patent Trial and Appeal Board (PTAB) periodically designates certain of its decisions as “informative.” Last week, the PTAB designated seven of its decisions from the past year as such: Medtronic, Inc. v. Nuvasive, Inc.; Unified Patents, Inc. v. PersonalWeb Techs., LLC; Prism Pharma Co., Ltd. v. Choongwae Pharma Corp.; Unilever, Inc. v. Procter & Gamble Co.; Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc.; Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited; and ZTE Corp. v. ContentGuard Holdings, Inc. In each of these cases, the PTAB declined to institute inter partes review (IPR).

The PTAB’s decision rested on 35 U.S.C. 325(d) in each case. Section 325(d) reads in pertinent part: “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.” In the PTAB’s view, the petitioners’ arguments in these cases had been presented or were pending in earlier-filed PTAB proceedings. In some of the decisions, the PTAB also cited 35 U.S.C. 314(a), which specifies that the PTAB may not institute an IPR unless the petitioner “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”

These seven decisions illustrate that the PTAB is willing to read the patent statute as providing broad discretion to deny a petition to institute an IPR in cases when similar issues have been raised previously. Parties to an IPR petition raising issues that had been raised earlier should be mindful of these decisions.

For more information, please contact Fitch Even partner Edward E. Clair.


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