Follow-On Filings Thwarted by 35 U.S.C. §325(d)

Last Friday, the Patent Trial & Appeal Board (PTAB) designated seven informational decisions. In each decision, the Office denied institution of an inter partes review (IPR) under 35 U.S.C. § 325(d). This statute permits the Director to 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. The new informative decisions are: 

These decisions demonstrate

the considerable discretion accorded the agency under 35 U.S.C. § 325(d). As I pointed out last week, rather than denying issue joinder on a strict read of 315(c), 325(d) adequately protects patentees while allowing the Board to move forward when and where appropriate. As emphasized in the ZTE decision linked above, the analysis should hinge on the relative equities:

A decision to institute review on some claims should not act as an entry ticket, and a how-to guide, for the same Petitioner . . .  .      .    .outside of the one-year statutory period, for filing a second petition to challenge those claims which it unsuccessfully challenged in the first petition.

ZTE at pg. 6 (emphasis added)

On the other hand, where a petitioner needs a follow-on petition to target never before challenged claims— responsive to an  amended litigation complaint, or the like— the Board should also balance the needs of the public to thwart such patentee gamesmanship.

The take away from the new informative decisions is that the Board frowns upon: (1) Follow-on petition filings that include issues and claims submitted in an earlier petition filing, by a same petitioner; and (2) petitions that target claims subject to multiple, ongoing proceedings and/or appeals to the CAFC.