Don't Regift Prior Art (or Arguments) To The PTAB

When challenging a patent through IPR, petitioners may be tempted to offer an improved version of an argument that had been offered by the examiner during prosecution, using similar prior art but shoring up potential shortcomings of what came before. However, three decisions that the Board recently designated as "informative" illustrate that a petitioner that isn't careful when reusing arguments may not be successful.

The Board designates decisions as "informative" to provide its judges with guidance on how to approach certain issues. ( Read more about which standards it applies in making this designation.) Here, the Board cited each decision's application of 35 U.S.C. § 325(d), which permits the Board to deny institution of petitions that use "the same or substantially the same prior art or arguments [as] previously ... presented to the Office."