PRISM Pharma Co., Ltd. v. Choongwae Pharma Corp., Case IPR2014-00315 (July 8, 2014) (Paper 14)
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. (“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 exercised its discretion and denied the petition under 35 U.S.C. § 325(d) based on the conclusion that the same prior art (the ’192 publication) and substantially the same arguments (invalidating prior art that anticipates the challenged claims) were presented to the Office in the context of prosecuting the ’738 patent (as well as in the context of prosecuting the parent application).
An interesting side note: The ’192 publication was presented to the Office indirectly by one of the named co-inventors of the ’738 patent. During prosecution of the parent application, and then again during prosecution of the ’738 patent, one of the named co-inventors of the ’738 patent sent Patent Owner Choongwae Pharma Corporation unsolicited declarations arguing that the claims in the applications were invalid for various reasons, including in view of the ’192 publication. Patent Owner thereafter submitted those declarations to the Office in IDSs, presumably to comply with its duty of candor. The named co-inventor who sent the unsolicited declarations to the Patent Owner founded the Petitioner company, PRISM Pharma Co., Ltd.