Petitioner should discuss the prosecution history of all relevant related patents when arguing that an issue was not previously considered by the Office
The Board has discretion to deny institution of an inter partes review under 35 U.S.C. 325(d) when “the same or substantially the same prior art or arguments previously were presented to the Office.” In SMR Automotive Systems USA, Inc. (“SMR Auto”) v. Magna Mirrors of America, Inc. (“Magna Mirrors”), IPR2018-00536 (PTAB Dec. July 9, 2018), the Board denied institution of an inter partes review, in part, because Petitioner did not include any discussion about the prosecution history of a related patent that the Board considered relevant to the § 325(d) inquiry.
In January 2018, SMR Auto filed a Petition for inter partes review for review of claims 1-11 of U.S. Patent No. 8,550,642 (“the ‘642 patent”). The ‘642 patent is directed to an exterior rearview mirror that includes a plano reflective element and an auxiliary reflective element mounted adjacent to each other (Decision, page 3).
In Ground 1, SMR Auto asserted that claims 1-11 are unpatentable under 35 U.S.C. §§ 102(a), (b), and (e), as being anticipated by U.S. Publication No. 2002/0072026, filed Dec. 20, 2000, published June 13, 2002 (“the ’026 publication”). The ’026 publication lists Niall R. Lynam, John O. Lindahl, and Hahns Y. Fuchs as inventors. The application that issued as the ’642 patent lists Niall R. Lynam as the sole inventor, and was filed August 21, 2012. (Id., pages 10-11).
SMR Auto alleged the ‘026 publication is prior art under 35 U.S.C. § 102(b) because the ‘642 patent should not be entitled to the May 20, 2003 priority date of the ‘872 provisional application, but rather is entitled only the priority date of its great grandparent U.S. Patent No. 7,934,843 (“the ‘843 patent”), which was filed on August 5, 2010. (Id., page 11). Further, SMR Auto alleged the ‘026 publication is prior art under 35 U.S.C. §§ 102(a) and 102(e) because the ‘026 publication is “by another” and was published on June 13, 2002, which is prior to the earliest possible effective filing date of May 20, 2003. (Id.).
In response, Magna Mirrors argued that the above issues of (1) whether the ‘642 patent is entitled to the May 20, 2003 priority date, and (2) whether the ‘026 publication qualifies as prior art because it is not the work of another were considered repeatedly during prosecution of the ’642 patent and its family. (Id.). During the prosecution of the ‘642 patent and the great grandparent ‘843 patent, the Examiner alleged that the claims were not entitled to the benefit of an earlier filing date. (Id., page 13). In response, Applicant submitted a Declaration from Niall R. Lynam declaring that the invention of the independent claims of the ‘843 patent was reduced to practice prior to June 13, 2002. Based on the Declaration, the Examiner allowed the claims. (Id., page 13).
Based on the prosecution history of the ‘843 patent, Magna Mirrors argued the Board should deny institution under 35 U.S.C. § 325(d) (Id., page 15). The Board agreed with Magna Mirrors that the issues of (1) whether the ‘642 patent is entitled to the May 20, 2003 priority date, and (2) whether the ‘026 publication qualifies as prior art were previously considered by the office. In explaining its reasoning, the Board stated that it was fatal to SMR Auto’s argument to not discuss the prosecution history of the ‘843 patent because the ‘843 patent is nearly identical to the ‘642 patent. (Id., pages 18-19).
Thus, the Board exercised its discretion under 35 U.S.C. § 325(d) and declined to institute inter partes review of claims 1-11 on the ground that the claims are unpatentable under 35 U.S.C. §§ 102(a), (b), and (e) as being anticipated by the ’026 publication. (Id., page 19).