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The Patent Trial and Appeal
Board (PTAB) has designated the following decisions, which address 35 U.S.C. §
325(d), as informative.
Unified
Patents, Inc. v. Berman, Case IPR2016-01571 (PTAB Dec. 14, 2016) (Paper 10)
In this decision, the
Board denied institution of one ground under § 325(d) because the
petitioner asserted an obviousness combination that included a reference the
examiner considered during prosecution and a second reference that was
cumulative of prior art that the examiner considered. The Board also
declined to exercise discretion under § 325(d) with respect to a second
asserted obviousness combination, where the examiner did not consider the
asserted references during prosecution, and the references were not cumulative
of the prior art the examiner considered during prosecution.
Hospira,
Inc. v. Genentech, Inc., Case IPR2017-00739 (PTAB July 27, 2017) (Paper 16)
In this decision,
the Board denied institution under § 325(d) because the examiner
considered during prosecution, and found persuasive, the same arguments the
petitioner raised regarding the patent owner’s claim to priority. The
Board concluded that the examiner’s previous priority determination was
dispositive as to each of the asserted grounds of unpatentability.
Cultec,
Inc. v. Stormtech LLC, Case IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7)
In this decision,
the Board denied institution under § 325(d) because (i) the examiner
previously considered two of the asserted references—one reference was raised
in a third-party submission that the examiner discussed in rejecting the claims
and the other reference the examiner cited and applied throughout prosecution;
and (ii) the two additional references upon which the petitioner relied were
cumulative of prior art the examiner considered during prosecution.
A copy of these informative decisions can be
found on the PTAB’s Informative Opinions page of the USPTO website.
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