Fenwick intellectual property lawyer Jennifer Bush spoke to Law360 about how three decisions designated as “informative” by the Patent Trial and Appeal Board highlight the difficulty of challenging patents using arguments considered when the patent was examined, and could help patent owners in getting inter partes review petitions denied.
In all three decisions that the PTAB flagged as providing guidance for litigants, the board refused to institute review of a patent because the same or similar invalidity arguments were looked at and rejected during prosecution of the patent. In terming the decisions as “informative,” the PTAB indicated it will be looking at whether America Invents Act review petitions recycle arguments, and that highlighting these similarities can help patent owners defeat challenges.
Bush told Law360 that what this means for practitioners is that “if you’re using the same art, you really need to distinguish it from the arguments made during prosecution or present some new evidence. Otherwise, you can expect it will be denied.”
Bush noted that the PTAB's rejection of petitions for using arguments previously considered by examiners appears to be a fairly recent development. The board was previously seen as being more open to considering such arguments, but an influx of petitions and criticism that IPRs are unfair to patent owners may have caused the board to think twice, she said.
“In the early days of IPRs, I feel like this wasn’t an issue. Everyone thought it was fair game on art that was addressed in prosecution,” Bush said.
The full article is available on the Law360 website (subscription required).