Kayak Software Corp. v. Int’l Bus. Mach. Corp.

Informative decision only: persuasive authority, not binding precedent. When the same or substantially the same prior art or arguments were previously presented to the Office during a long, exhaustive prosecution, and the petitioner shows no materially changed circumstances, the Board may reject the petition under 35 U.S.C. § 325(d) and decline institution under § 324(a) and 37 C.F.R. § 42.208, even though the exact combination was never expressly applied in a rejection. Adding a reference that is cited only for dependent-claim subject matter and is substantially similar to what the Examiner already considered does not avoid § 325(d). No prior precedent directly addressed this issue; the decision cites no Board decision on § 325(d). It clarifies that § 325(d) is not avoided by pointing out that the specific combination of already-considered references was never expressly set forth in a rejection, or by adding an incremental reference. For a petitioner, a petition built on art that was cited, discussed or argued in prosecution must now explain specific circumstances that have materially changed or that the Office did not know of, such as changed claim constructions or new evidence on priority dates, or it risks denial. For a patent owner, a preliminary response that documents the extent of prosecution (pages devoted to each reference, number of Office Actions and Board decisions) gives the Board a basis to deny under both § 325(d) and § 324(a). The decision cites no Federal Circuit, CCPA or Supreme Court authority for the § 325(d) point; it rests on the statutory text, 37 C.F.R. § 42.208, and 77 Fed. Reg. 48,680, 48,702 (Aug 14, 2012). LEGAL TEST OR STANDARD: The Board applied 35 U.S.C. § 325(d), under which 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." It also applied its discretion under § 324(a) and 37 C.F.R. § 42.208, which may be exercised as to some or all grounds. Under § 324(a), the factors of the 77 Fed. Reg. 48,702 passage (effect on the economy, integrity of the patent system, efficient administration of the Office, and timely completion) are considered, and the § 325(d) factors weigh in that analysis. Similarity of art alone does not require denial. Weighing against denial are a prosecution that was not as exhaustive, clear errors in the original prosecution, or art only cursorily considered. Weighing for institution are specific circumstances that have materially changed or that the Office was not aware of, such as changed claim constructions or new evidence on priority dates. TRIGGERING FACTS: The petition acknowledged that Reference 7, Simon and Alber were all considered in prosecution. The record showed at least 86 pages directed to Reference 7, 38 to Simon and 72 to Alber, and every two-reference permutation was mentioned in at least one paper. The application had more than 12 years of prosecution, at least six Office Actions with prior-art rejections, and three Board decisions each entering new prior-art grounds. Wilson was new but was cited only for the additional subject matter of dependent claims 2, 9, 15 and 22, which the Examiner rejected without needing prior art. The petitioner identified no materially changed circumstances. KEY QUOTE: "Accordingly, on these facts, we discern that instituting review solely because the exact combination of Reference 7, Simon, and Alber advanced by Petitioner was not set forth in the prosecution history would exalt form over substance, if Section 325(d) could be avoided entirely by merely adding an already-considered incremental reference to a previously considered prior art combination." (Paper 16, p. 9) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Petitioners relying on art that appears in the prosecution history should, in the petition itself, identify and explain the specific materially changed circumstances or previously unknown facts (such as changed claim constructions or new priority-date evidence) rather than argue that the exact combination was not expressly applied. Patent owners should document in the preliminary response the pages, Office Actions and Board decisions that addressed each reference.