Prism Pharma Co. v. Choongwae Pharma Corp.

Informative decision only: persuasive authority, not binding precedent. When the same prior art and substantially the same arguments that a petitioner relies on were previously presented to the Office during prosecution, including by a co-inventor affiliated with the petitioner, and the examiner considered them in allowing the claims, the Board may exercise its discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review. Here the petitioner's priority-based anticipation challenge, resting on lack of written description support in the parent application, was treated as substantially the same as the co-inventor's prosecution declarations. No prior precedent directly addressed this issue in the text; the decision cites no earlier Board decision. For a petitioner, a challenge that recycles art and a priority or written-description theory already put before the examiner, particularly through a related person such as a co-inventor and cofounder, risks denial under § 325(d), even though it is framed as a new petition. For a patent owner, prosecution history showing that the examiner knew of the reference and the written-description argument, and allowed the claims anyway, supports a § 325(d) request in the preliminary response. The Board relied on the statutory text of 35 U.S.C. § 325(d) and cited no Federal Circuit, CCPA or Supreme Court authority. LEGAL TEST OR STANDARD: Under 35 U.S.C. § 325(d), "In determining whether to institute or order a proceeding under . . . 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." The Board asked whether the same prior art and substantially the same arguments had previously been presented, and then exercised its discretion to deny. TRIGGERING FACTS: Petitioner asserted a single anticipation ground based on the '192 publication (published December 12, 2009), arguing the claims lack written description support in the parent '858 application and so get only the July 29, 2011 filing date. Dr. Kahn, a co-inventor, cofounder and outside board member of Petitioner, twice told examiners, in the '858 and '428 prosecutions, that the '192 publication anticipated and that the claims lacked written description support. The patent owner submitted his declarations in IDSs, and the examiner rejected claims for lack of written description. The examiner and his supervisor reviewed the declarations and arguments and allowed the claims as "free from prior art" after amendments to the specification and claims. KEY QUOTE: "Thus, Dr. Kahn's allegation of lack of written description support in his Declarations must also serve as the basis for challenging the priority claim." (Paper 14, p. 13) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Before filing a petition, check the prosecution history for the same reference and the same written-description or priority theory, including submissions by related persons such as co-inventors. If they appear, explain why the petition is not substantially the same as what the examiner considered. A patent owner should point to that history in its preliminary response and request denial under § 325(d).