PTAB / Board Discretion

PTAB institutes review on previously-cited prior art

By Todd M. Siegel Published September 17, 2019

This week the PTAB rejected a Patent Owner’s request that the Board deny institution of inter partes review where the relied upon prior art was cited on the face of the challenged patent. Patent Owners routinely ask the Board to exercise its discretion under 35 U.S.C. Sections 314(a) and 325(d) to deny institution. In Adobe v. Realtime (IPR2019-00712), the Patent Owner argued that such discretion should be exercised because the Petition failed to inform the Board that the relied upon prior art was before the Examiner during prosecution of the challenged patent. The Board disagreed finding the following:

Furthermore, Patent Owner cites no authority supporting its argument that Petitioner should have pointed out that Tso and Vishwanath were “presented to the Office.” See Prelim. Resp. 10. The listing of Tso and Vishwanath occurs in the References Cited, U.S. Patent Documents, portion of the ’442 patent, which spans four pages, eight columns, and totals, by our estimate, approximately six hundred forty (640) references. Another twenty four (24) pages, forty-eight (48) columns, and thousands of other publications also are listed. Absent some other reason beyond the references being listed in information disclosure statements filed during prosecution and then listed as References Cited, we are not persuaded that Petitioner had an obligation to point out that two references it relies on were two of a multitude of prior art submitted during prosecution.

Adobe v. Realtime, IPR2019-00712, Paper 9, p. 18.

The Patent Owner additionally complained that the Petition was defective for failing to satisfy the “particularity requirement” of 35 U.S.C. Sec. 312(a)(3) in Ground 1 which provided that the challenged claims were “anticipated and/or rendered obvious” by a single prior art reference. The Board refused to exercise its discretion and instituted inter partes review holding that the use of a single reference as being either anticipatory and/or rendering obvious a claim does not violate the particularity requirement.