PTAB Partially Denies IPR Based on Reference Considered During Prosecution

In IPR2016-01836, the Board partially denied institution of inter partes review of a patent under 35 U.S.C. § 325(d) because the same or substantially the same prior art and arguments were presented by the Petitioners that were already presented in prosecution of the application. Petitioners argued that the portion of the disclosure they were relying on was not considered during prosecution. The Board found that even though a certain element of the reference was not expressly considered, the Board could infer from the prosecution history that the Examiner considered the reference as a whole and did not find the element to meet the proposed claim limitation. 

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

PTAB Partially Denies IPR Because Petitioner Failed to Identify Structure for Means-Plus-Function Limitations

In IPR2016-00114, the Board partially denied institution of inter partes review of a patent because the Petitioner failed to identify the corresponding structure for means-plus-function limitations. The claims at issue included the word “means” and the Petitioner did not provide any rebuttal to the presumption that 35 U.S.C. §112, 6th paragraph applied. The Petitioner failed to discuss 35 U.S.C. §112, 6th paragraph at all, and thus did not properly identify the corresponding structure for the means-plus-function limitations.  

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