So a Petitioner files an IPR with new art combinations that weren’t considered during prosecution, including some new references that weren’t applied by the Examiner. Sounds like a good start to a Petition, right? Think again. A recent IPR got denied under 35 U.S.C. § 325(d) for doing that.
Now stop and let that sink in. An IPR was denied under 325(d) despite citing new art and combinations.
Before I go on to the details of the case, remember what 325(d) covers. It gives the PTAB discretion to deny trial if “the same or substantially the same prior art or arguments previously were presented to the Office.”
In Neil Ziegman, N.P.Z., Inc. v. Stephens, IPR2015-01860 (Paper 11), Petitioner based all of its challenges in part on a reference (“Ziegman”) that was cited to the Examiner and applied by the Examiner in rejections of claims other than the ones challenged in the present petition. Id. at 7-8. The Petitioner cited new art in combination with Ziegman.
The Board determined, however, that the Petitioner was relying on Ziegman “in the same manner” as the Examiner relied on another reference. Id. at 10. That is, the Petitioner was citing Ziegman as evidence of the same facts that were at issue in prosecution. The new combinations still lined up those facts in the same way. But because the Patent Owner overcame the rejections on those facts, and the Petitioner did not offer any new ones, the Board concluded that the grounds presented in the Petition already had been presented to the Office. The new challenges were, in effect, cumulative of the old.
The Petitioner also attacked a showing of secondary considerations that the Patent Owner made to overcome obviousness rejections. But this attack failed as well, because it was little more than attorney argument. Once again, the Board explained that this issue was before the office, and declined to institute trial without new evidence to call into question the weight and reliability of the Patent Owner’s evidence.
This illustrates a fundamental point that many practitioners overlook: references are merely evidence of what was known at a certain time. Challenges aren’t based on the references so much as on the disclosures that the references are evidence of. Replacing Reference A with Reference B for the identical teaching does not change the set of facts on which a rejection or IPR challenge is based and may lead to a 325(d) denial as here.
Remember: new facts, not new references, drive IPR’s.