The most persuasive IPR petitions offer fresh unpatentability theories never considered before.  But petitions that simply repackage old issues often don’t gain traction.  So, when you’re citing prior art that was before the Examiner during original prosecution, you need to emphasize what’s new about your theories.  Failure to do so can spell doom under 35 U.S.C. § 325(d), which gives the PTAB discretion to deny institution when a petition relies on the same or similar prior art or arguments as those raised in examination.  See Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, slip op. at 17–18 (PTAB Dec. 15, 2017) (Paper 8).

The PTAB’s recent denial of institution in Kingston Tech. Co., Inc. v. Memory Techs., LLC, IPR2019-00654, Paper 9 (P.T.A.B. Aug. 13, 2019), illustrates this point.  In Kingston, Petitioner asserted two obviousness grounds based on one main prior art reference, MMC 3.31, a later-but-materially-similar edition of prior art that played a key role during prosecution, MMC 3.1.  During examination, the Examiner twice rejected pending claims over MMC 3.1, which led to responsive amendments and then allowance.  But Petitioner’s proposed grounds did little more than directly challenge the allowance decision, even though the Examiner fully considered and rejected essentially the same prior art.  Petitioner also failed to adequately show that its other cited prior art (CompactFlash) filled the gaps for obviousness.  Accordingly, the PTAB denied institution under Section 325(d).

Kingston also underscores the importance of proving up prior art status for cited references.  After denying institution on Section 325(d) grounds, the PTAB went on to find that Petitioner failed to qualify MMC 3.31 as a “printed publication.”  Petitioner relied on an expert declaration and a declaration from the Internet Archive, sources of evidence that often qualify websites as prior art.  But Petitioner failed to connect its proof up to the legal requirements.  Even if skilled artisans knew of the standard (per the expert), and even if the website published the standard (per the Internet Archive), it does not necessarily follow that skilled artisans knew about the website or how it could be found.  In this respect, Petitioner failed to show how skilled artisans either knew about the website or could have found it using reasonable efforts, e.g., through a search engine.  For this additional reason, the PTAB denied institution.

Kingston offers some important takeaways for how to maximize the chances of success for IPR petitions.  Make sure to explain how the proposed grounds offer new unpatentability theories, particularly if you’re using prior art that doesn’t materially differ from the prosecution record.  And, leave no stone unturned when it comes to proving that your cited prior art meets the requirements for “printed publication” status.