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ARTICLE · 22 MARCH 2018

PTAB Adds More Feedback On Previously Presented Art/Arguments (325(D))

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Today the Patent Trial & Appeal Board (PTAB) added to its growing stockpile of cases that address the meaning of "same or substantially the same prior art or arguments" under 35 U.S.C. § 325(d).

United StatesIntellectual Property
Scott A. McKeown
Scott A. McKeown
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Additional Informative Decisions 325(d)

Today the Patent Trial & Appeal Board (PTAB) added to its growing stockpile of cases that address the meaning of "same or substantially the same prior art or arguments" under 35 U.S.C. § 325(d). This growing body of decisions is welcome news for Patent Owners as it emphasizes the scrutiny given to AIA trial petitions that attempt to revisit prior art and arguments of a previous proceeding.

The PTAB has designated the following decisions informative.

Kayak Software Corp. v. International Business Machines Corp., Case CBM2016-00075 (PTAB Dec. 15, 2016) (Paper 16). In this decision, the Board exercised its discretion under 35 U.S.C. § 325(d) and declined to institute review of the claims under obviousness grounds because the record indicated that the cited prior art was previously presented to and extensively considered by the Office during prosecution. The Board further was not persuaded that the incremental addition of an

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