This is the first of a three-part series discussing developments around Section 325(d). Part two will appear in our November 2017 newsletter and part three will appear in our December 2017 newsletter.

Congress granted the Board broad discretionary power to deny institution of AIA proceedings under 35 U.S.C. §325(d) - denial is discretionary if Petitioner uses “the same or substantially the same prior art or arguments previously presented to the Office.” Though infrequently given as a reason for denial for the first few years following passage of the AIA, an expanded PTAB panel recently gave §325(d) sharper teeth against follow-on petitions.^[i]  More specifically, the expanded PTAB panel adopted a seven-factor analysis^[ii] to determine whether a follow-on petition should be instituted.

As illustrated in Figure 1 below, §325(d) has been cited in an increasing number of institution denials. What used to be a seemingly throwaway Patent Owner argument has been picking up steam and is becoming a viable, and even reliable, defense in the right circumstances.

Given the rise of §325(d) as a reason for non-institution in the last year, it is becoming even more imperative to know how to select and use the best prior art at the outset. Yet our experience and research indicates that each PTAB panel (and each PTAB Judge) seems to apply a different threshold when determining whether to invoke their discretionary §325(d) power. So finding prior art that offers the greatest likelihood of success may be the most important decision to be made by Petitioners. But what prior art or arguments are (or are not) the same or substantially the same as those previously presented to the Office? The answer: it depends.

Even though the Board can be unpredictable, some very fact-specific trends are developing that give us some insight on how a majority of  PTAB panels may treat a certain prior art reference. For example, a Petitioner needs to ask itself:

• What if the prior art was part of an Examiner’s rejection during the prosecution of the patent being challenged?

• What if the prior art was cited in an Information Disclosure Statement (IDS)?

• What if the Examiner made the prior art part of the record but did not rely on it for any rejections?

• What if the prior art has been used in an Inter Partes Review, Post-Grant Review, Covered Business Method, re-examination proceeding, or any other proceeding before the Patent Office?

• If the prior art was cited in a prior proceeding, at what stage of the prior proceeding is the prior art no longer “available” for follow-on proceedings?

• What if a previous petition cited the prior art challenging a different claim than the claim(s) you are seeking to challenge?

• What if the Examiner overlooked a key portion of the reference or seemingly misunderstood, and thereby misapplied, the prior art?

• Can a potential §325(d) issue be overcome with an Expert Declaration where the Expert corrects previous deficiencies in the record?

• What if the prior art shares the same, or a substantially similar, specification as a reference already cited during prosecution or cited in a proceeding before the Patent Office?

• What if the prior art is a journal article that substantially mirrors a patent or patent publication cited during prosecution or cited in a proceeding before the Patent Office?

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Each of the questions presented above are inquiries that may sway the PTAB panel to invoke (or not invoke) its discretionary §325(d) power.

While it can be difficult to predict with certainty how a PTAB panel might decide on a §325(d) issue, especially without knowing the specific panel members, SKGF has spent a considerable amount of time researching and studying these issues and identifying the trends as they develop.

As noted at the outset, the next two issues of this newsletter will dive deeper into the issues described above.

_{[i] General Plastic Industrial Co. Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357  (PTAB September 6, 2017) (Paper 15).}

_{[ii] NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134 (PTAB May 4, 2016) (Paper 9).}