Last week the Patent Trial and Appeal Board ("PTAB") provided yet another arrow in the patent owner's quiver for defending against institution of IPRs. In NHK International Corp. v. Intri-Plex Technologies, Inc., IPR2018-00752, the PTAB exercised its discretion under 35 U.S.C. § 325(d) and denied institution because the asserted art was already considered during the original examination of the patent. The PTAB also found that denial was warranted under 35 U.S.C. § 314(a) in light of the additional factor that a district court trial on the same patent was imminent.
In this case, patent owner Intri-Plex Technologies, Inc. ("Intri-Plex") filed a complaint in district court alleging NHK International Corp. ("NHK") infringed U.S. Patent No. 6,183,841 ("the '841 Patent"), and a trial in that case is currently scheduled for March of 2019. NHK, in turn, filed a petition for IPR of the '841 Patent in March of 2018.
The PTAB denied the petition (and thus institution of trial) under both Section 325(d) and 314(a). Section 325(d) gives the PTAB express discretion to deny a petition for IPR when "the same or substantially the same prior art or arguments previously were presented to the Office." 35 U.S.C. § 325(d). When evaluating when to exercise their discretion to deny institution, the PTAB weighs the following factors:
- the similarities and material differences between the asserted art and the prior art involved during examination;
- the cumulative nature of the asserted art and the prior art evaluated during examination;
- the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection;
- the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art;
- whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and
- the extent to which additional evidence and facts presented in the Petition warrant reconsideration of prior art or arguments.
The PTAB found that these factors weighed against institution because the "asserted art is a subset of the same prior art that the Examiner applied in rejecting the claims during prosecution," and "the arguments [NHK] advance[d] in its Petition [were] substantially similar to the findings the Examiner made to reject the claims." IPR2018-00752, Paper No. 8 at 18 (P.T.A.B. Sept. 12, 2018). The PTAB noted that the petitioner merely repackaged the same arguments already made before the examiner, which warrants denial of the petition under § 325(d).
Interestingly, the PTAB found that denial was also appropriate under § 314(a). The PTAB agreed with patent owner Intri-Plex, who argued that instituting IPR against the '841 Patent "ultimately would be inefficient" given the advanced state of the district court case between the parties. Id., at 19. Specifically, the PTAB stated that institution "would be an inefficient use of Board resources" as the district court proceeding, involving the same asserted same prior art and arguments, is nearing its final stages with expert discovery closing in a month and a half and a 5-day trial planned in 6 months. Id., at 20. The PTAB acknowledged that any trial before them would not conclude until 6 months after the district court trial and therefore would not be consistent with the objectives of IPR, to provide an effective and efficient alternative to district court litigation. Id.
This decision is a win for patent owners who more often than not find themselves staring down IPRs on patents they assert. Patent practitioners should be mindful of this decision as it gives patent owners yet another arrow in their quiver for defending against the institution of an IPR and serves as a warning to petitioners to file an IPR petition at the early stages of the parallel district court proceeding.
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