PTAB Decision Provides Guidance On Using Art Previously Considered By The Office

On October 24th, the PTAB designated three decisions related to discretionary petition denials under 35 U.S.C. § 325(d) as informative. Unified Patents, Inc. v. Berman is discussed below. We previously reported on Hospira, Inc. v. Genentech, Inc., IPR2017-00739, here. An article on Cultec, Inc. v. StormTech LLC, IPR2017-00777, will be posted shortly.

The PTAB has discretion, under 35 U.S.C. § 325(d), to deny institution of inter partes review because the same or substantially the same prior art or arguments were previously presented to the Office. On October 24, 2017, the PTAB designated as informative a decision denying institution that addressed this issue in Unified Patents, Inc. v. Berman, IPR2016-01571 (PTAB Dec. 31, 2016)(Paper 10), see § II.B. That decision, regarding U.S. patent number 5,523,791 (the '791 patent"), provides useful guidance to practitioners who are considering whether to include grounds in a Petition that rely on art cited to the Examiner