IPR Instituted on Art Considered During Examination After Finding the Examiner Misunderstood the Reference

Under 35 U.S.C. § 325(d), the Board has the discretion to deny an IPR petition if “the same or substantially the same prior art or arguments” were presented during prosecution or in another proceeding. As discussed in an earlier post, the Board may weigh several factors when determining whether to exercise its discretion and deny an IPR petition under § 325(d).

In Arrows Up, LLC v. Oren Techs., IPR2018-01231 (PTAB Jan. 14, 2019) (Paper 7), the Patent Owner requested the Board to exercise its discretion and deny an IPR petition under § 325(d) because the primary reference asserted in all invalidity grounds had been specifically addressed and relied upon by the examiner during prosecution. According to the Patent Owner, it was appropriate to deny institution because the Petitioner did not identify any errors by the examiner in allowing the patent.

Contrary to the Patent Owner’s assertion, the Board found that the Petitioner had shown that the examiner misunderstood the reference in determining that it did not disclose a particular claim element. Because the Petitioner persuasively explained that the examiner’s interpretation of the reference was in error, the Board declined to deny institution under 35 U.S.C. § 325(d).

This case is a good example showing that the Board is often willing to reconsider “old art” if the Petitioner provides a good reason to do so.