Kayak Software Corp. v. Int’l Bus. Mach. Corp., Case CBM2016-00075 (Dec. 15, 2016) (Paper 16)

Takeaway (Informative): The Board has broad discretion to deny institution to the extent that a CBM petition presents the same or substantially the same prior art or arguments previously considered by the Office (such as in the context of the original prosecution of the patent at issue).


Petitioners Kayak Software Corp. et al. (“Kayak”) filed a CBM petition challenging claims 1-25 of U.S. Patent No. 7,072,849 (“the ‘849 patent”) as obvious over Reference 7 and Simon; Reference 7, Simon, and Alber; Reference 7, Simon, and Wilson; and/or Reference 7, Simon, Alber, and Wilson. Patent owner (“IBM”) argued that the grounds should be denied under 35 U.S.C. § 325(d), which states that “[i]n determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”

Reference 7, Simon, and Alber were considered multiple times during various stages of the prosecution history of the ‘849 patent. However, Kayak asserted that the Board should still institute IPR based on those references because the obviousness combinations addressed in the petition were never expressly considered during the prosecution history.

The Board exercised its discretion to deny institution based on the combinations of one or more of Reference 7, Simon, and Alber. The Board stated that:

For the grounds under 35 U.S.C. § 103(a) based solely on Reference 7, Simon, and Alber, we are persuaded that the record could not be clearer that those references were presented to and extensively considered by the Office during prosecution of the ‘849 patent. Aside from the fact that each of Reference 7, Simon, and Alber are listed in the ‘849 patent as having been “cited by Examiner,” the prosecution history, collectively, includes at least 86 pages directed to Reference 7, at least 38 pages directed to Simon, and at least 72 pages directed to Alber. While we acknowledge that no specific rejection was set forth by the Office over the exact combination of Reference 7, Simon, and Alber advanced by Petitioner, every two-reference permutation of Reference 7, Simon, and Alber is mentioned in at least one of the above-referenced papers, and the Amendment filed September 16, 2003, mentions all three. Indeed, both the Examiner and the Board were each separately presented with arguments concerning each of Reference 7, Simon, and Alber.

The Board also declined to exercise its discretion to institute on the grounds involving the Wilson reference, which was not cited during prosecution. The Board reasoned that the main references in the combinations were cited during the original prosecution (Wilson was a secondary reference, merely used to fill in limitations in certain dependent claims), and the relevant disclosure of Wilson is arguably redundant to disclosure in the Simon reference. The Board noted that the Examiner was not persuaded that the additional subject matter in those dependent claims was separately patentable.

However, the Board noted that:

To be sure, we acknowledge that similarity of prior art alone does not require the Office to exercise its discretion in denying any grounds set forth in a Petition. There could be situations where, for example, the prosecution is not as exhaustive, where there are clear errors in the original prosecution, or where the prior art at issue was only cursorily considered that can weigh against exercising the discretion. Moreover, if the Petitioner had brought forward and explained some specific circumstances that have materially changed or of which the Office was not aware of during the prior consideration of the prior art and arguments at issue—such as, for example, changed claim constructions or new evidence related to priority dates of the prior art or challenged patent—then those could weigh in favor of institution. Petitioner, however, has not articulated such circumstances in this case. Accordingly, for the above reasons, we exercise our discretion under 35 U.S.C. § 325(d) and decline to institute review on Petitioner’s proffered grounds of obviousness based on Reference 7, Simon, Alber, and Wilson.

Clint Conner

Clint Conner

Clint’s practice focuses on intellectual property with an emphasis on patent litigation, inter partes reviews, and patent enforcement strategies. Although he has remained focused on U.S. intellectual property law throughout his career, he brings an international perspective, having spent nearly five years representing companies in U.S. patent litigation while living and working in Tokyo. Before attending law school, Clint was an engineer for three years with Lucent Technologies’ Bell Labs (now Alcatel-Lucent).

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