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.