The Patent Trial and Appeal Board (PTAB) may deny institution of inter partes review (IPR) of claims of a patent if the Petition for IPR repeats the same issues made during prosecution of the patent, even if the Petition uses a prior art reference cited during prosecution to reject only other claims of the patent and uses new secondary references. Additionally, where the newly cited art and arguments are the same or substantially the same as those previously presented to the Office, the PTAB will not reconsider the any evidence of secondary considerations already considered during prior prosecution.
On February 24, 2016, in Ziegman v. Stephens (IPR2015-01860), the PTAB denied institution of IPR of claims 12-15 of U.S. Patent No. 8,881,447 (the ‘447 patent), because the Petitioner presented substantially the same art or arguments as those previously presented to the U.S. Patent and Trademark Office (the Office).
On April 1, 2016, the USPTO published final amendments to the Rules of Practice for PTAB AIA trials. The amendments are effective May 2, 2016, and apply to all AIA petitions, whether they were filed before, on or after the effective date. Highlights include:
1) 37 C.F.R. § 42.11: The amended rules require that every paper be signed and that the signature complies with the signature requirements set forth in 37 C.F.R. § 10.18(a). The act of presenting a paper to the PTAB will be considered a certification as set forth in 37 C.F.R. § 10.18(b). Under rule 10.18(b), the party presenting a paper certifies that all statements made are believed to be true and that the party shall be subject to criminal penalties for any knowingly and willfully false statements or representations. The amended rules allow the PTAB to impose sanctions on an attorney that violates this rule and provides a procedure for the opposing party to file a motion for sanctions.