Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., Case IPR2014-00315 (July 8, 2014) (Paper 14)

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

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Takeaway:

The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously presented to the Office (such as in the context of the original prosecution of the patent at issue).

Summary (Informative) :

PRISM Pharma Co., Ltd.1 (“Petitioner”) filed an IPR petition challenging claims 1-3 and 5-7 of U.S. Patent No. 8,318,738 (“the ’738 patent”). The Board denied the petition based on the conclusion that the same prior art (the ’192 publication) and substantially the same arguments (the ’192 publication anticipates the challenged claims) were presented to the Office in the context of the original prosecution of the ’738 patent by a co-founder of petitioner.

Clint Conner

About: 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).