Patent Owner Challenges Under 35 U.S.C. § 325(d)

One issue commonly raised by a patent owner in their Preliminary Response is the Board's ability to deny institution because the petitioner's proposed grounds are premised on prior art previously considered by the U.S. Patent and Trademark Office. The patent owner argues that the prior art at issue was previously raised during prosecution, in a reexamination, or in a prior petition for inter partes review of the challenged patent. Under 35 U.S.C. § 325(d), the Board has discretion to deny a petition where it is based on arguments and prior art already seen at the PTO:

“In determining whether to institute or order a proceeding ... the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d).