January 27, 2017Newsletter

This Week at the Board - January 27, 2017

PTAB Institutes Review over § 325(d) Challenge

In IPR2016-01413, the PTAB granted institution of inter partes review despite Patent Owner’s contention that the arguments set forth in the Petition were similar to issues presented in previous litigation and that the Examiner had taken those issues, and the court’s decision, into consideration during the prosecution of the subject patent.

35 U.S.C. § 325(d) states “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 present to the Office.” The Board began by noting that denial of institution under the section is a matter of discretion. Though the prior art considered in the previous litigation overlapped with that presented in the Petition, the obviousness of the subject claims was not an issue in the litigation. Moreover, the Examiner’s allowance of later applications in the same patent family was not relevant to the patentability challenge presented in the Petition. Finally, the Petition presented additional arguments and evidence beyond what was considered by the Examiner. Thus, institution was appropriate.

A link to the PTAB’s Decision is provided here.

PTAB Upholds Patent in Light of Secondary Considerations

In IPR2015-01651, the PTAB upheld a patent, in part, because secondary considerations outweighed evidence of its obviousness.

U.S. Patent No. 8,550,271 (the ’271 Patent) describes a bottle cap that is made with thinner and harder steel than that of conventional bottle caps. Petitioner alleged all of the claims of the ’271 Patent were obvious. While the Board determined the Petitioner had failed to show by a preponderance of the evidence that the subject matter of the claims were unpatentable, it also found that the secondary considerations provided by Petitioner outweighed evidence of obviousness. The Patent Owner’s secondary considerations included nexus, commercial success, industry praise, and copying. The Board pointed to numerous considerations including an increase in market share in Peru as well as industry praise. Based on its findings, the Board determined that no claims of the ’271 Patent were unpatentable.

A link to the PTAB’s Final Written Decision is provided here.

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