Denial of “Duplicative” or “Cumulative” Grounds in IPR Petitions

Denial of “Duplicative” or “Cumulative” Grounds in IPR Petitions

Peter-SiddowayBy Peter D. Siddoway

As of August 1st, the Patent Trial and Appeal Board had granted a little more than 90% of the inter partes review petitions that it had considered.  However, the vast majority of those IPR petitions were granted-in-part.  Most IPRs are authorized to proceed on only a subset of the challenged claims or the grounds of unpatentability asserted for each claim.  (See 37 C.F.R. § 42.108(a).)

One of the most common rejections from the Board is a denial based on duplicative or cumulative grounds.  While the Rules allow for the Board to “deny some or all grounds for unpatentability for some or all of the challenged claims” (37 C.F.R. § 42.108(b)), the only explicit basis provided for is a lack of “sufficient grounds.”  An IPR “shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.”  (37 C.F.R. § 42.108(c).)

For a petitioner, these “cumulative grounds” rejections may not be ideal.  A patent owner may be able to argue more effectively against one reference or another, or may be able to challenge the obviousness of one combination of references more effectively than another.  These are issues that may not be apparent to the petitioner until after the patent owner’s response, or even until after the IPR is instituted.

The Board has made it clear, however, that these rejections to cumulative grounds will continue, citing its mandate to procure “the just, speedy, and inexpensive resolution of every proceeding.”  (37 C.F.R § 42.1(b).)  The Board will not “authorize inter partes review on certain unpatentability challenges . . . [where] the challenges appeared to rely on the same prior art facts as other challenges for which inter partes review had been authorized.”  (IPR2012-00006, Paper 43 (May 10, 2013).)  Redundant unpatentability challenges would impede “the just, speedy, and inexpensive resolution” of an IPR.  (Id.)  “In other words, considering multiple rejections for the same unpatentability issue would unnecessarily consume the time and resources of all parties involved.”  (Id.)

While a petitioner can request that the Board reconsider a rejection, it appears that the Board will only reverse a prior “cumulative grounds” rejection if the petitioner is able to “provide a meaningful distinction between the different, redundant rejections.”  (Id.)  If the Board finds that multiple references have been cited for the same facts, it will not be enough for a petitioner to argue that the cited references are not identical, or to “speculate[] that in certain publications an element may be more clearly set forth in one publication rather than another.”  (Id.)  Rather, a petitioner must provide an adequate explanation as to the differences between the references and “how this difference would impact the unpatentability challenge.”  (Id.)