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Unified Patents Inc. v. John L. Berman

Paper No. 10, Dec. 14, 2016

IPR2016-01571 (Patent 5,523,791)

FACTS

Petitioner Unified Patents petitioned for inter partes review of claims 2-16 of U.S.P.N. 5,523,791.  Patent Owner Berman filed a Preliminary Response. Institution was denied.

HOLDING

In considering 35 U.S.C. § 325(d), the Board can exercise its discretion and deny IPR trial where an Examiner previously considered the same prior art and arguments during prosecution of the application (that is now raised by Petitioner in the Petition). See Paper 10, p. 12.

TAKEAWAY

Petitioner asserted that the ‘791 claims were obvious in view of certain prior art (Russell; Intel User’s Manual; Marlton).  See Paper 10, pp. 10-11.

However, Patent Owner in its Preliminary Response argued that the U.S. Patent Examiner during prosecution already considered the Russel reference, and allowed the claims to issue. See Paper 10, p. 9.  Patent Owner also states that Petitioner deliberately avoided the complete prosecution history record and did not address critical arguments during prosecution that successfully argued over the Russell reference.  Id.

35 U.S.C. § 325(d) states that “… 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.”  See Paper 10, p. 9.

The Board agreed that the Russell reference was substantially considered by the Examiner. See Paper 10, p. 11.  Also, the Board determined that Petitioner was using the Intel User’s Manual in the same manner as the Examiner used Russell.  Id.  Thus, the Petitioner was relying on the same prior art and arguments previously raised to the Office during prosecution of the patent application.  See Paper 10, p. 12.  Thus, institution was denied.

 

A copy of the PTAB order can be found here.