The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously presented to the Office (such as in the context of the original prosecution of the patent at issue).
Petitioner Unified Patents Inc. (“Unified”) filed a petition challenging claims of U.S. Patent No. 5,523,791 (“the ’791 patent”) based on the following grounds of unpatentability:
|§103||Russell alone or in view of Intel User’s Manual||2|
|§103||Russell alone or in view of Intel User’s Manual||3-8, 10-15|
|§103||Russell and Marlton||9, 16|
The Board declined to institute IPR against claims 2–8 and 10–15 based on its conclusion that the same or substantially prior art or arguments were previously presented to, and considered by, the Office during prosecution of the ’791 patent.
During prosecution of the ’791 patent, the Examiner rejected originally filed claims 1, 2, and 4 as anticipated by Russell; claim 3 was deemed anticipated by another reference. In response, the Applicant filed an amendment which distinguished Russell as superimposing windows (as opposed to images) over one another in a composite TV display. After a subsequent series of amendments in response to rejections based on another prior art reference and Examiner interviews, claims 3, 5-11, and 13-20 were allowed pursuant to a Notice of Allowance, correlating to claims 1-16 in the ’791 Patent.
With regard to the grounds of the petition challenging claims 2–8 and 10–15, the Board determined that the arguments based on Russell were the same as those considered by the Examiner during the prosecution. Even though the Examiner never expressly rejected the issued claims over Russell, those claims were added via amendments immediately following the office action rejecting claims over Russell. Further, an Examiner interview summary shows that the Examiner considered Russell against the added claims.
In addition, the Board found that the cited sections of the Intel User’s Manual presented arguments that were substantially the same as Russell. The petitioner provided no explanation as to why the Board should readjudicate the arguments presented in Russell alone or in view of Intel User’s Manual. Accordingly, the Board exercised discretion under § 325(d) to reject these grounds.
On the other hand, the Board did not exercise discretion under § 325(d) with respect to the Russell and Marlton combination. Marlton disclosed distorting a displayed image by using different scaling factors in the horizontal and vertical directions – concepts different from those presented in Russell. The Patent Owner did not argue that Marlton was the same or substantially the same as Russell, and Marlton was never cited during the prosecution of the ’791 Patent. However, even though the Russell and Marlton ground passed § 325(d) scrutiny, the Board still denied institution based on this ground for failure to demonstrate a reasonable likelihood in establishing that claims 9 and 16 would have been obvious.