In a recent case, the PTAB (Patent Trial and Appeal Board) turned down the application of Section 325(d) and proceeded to institute an inter partes review, despite the patent owner claiming that the application substantially relied on the same prior art the Office had already evaluated. This incident stems from the controversial case, Geotab USA, Inc. et al v. Omega Patents, LLC, IPR2023-00504, Paper No. 11 (PTAB July 25, 2023), where the same inventorship and similar technology were tied up in the new art being examined.
The PTAB’s denial of Section 325(d)’s application in this context implies that common inventorship and related technology, which were key arguments made by the patent owner, are insufficient to stop an inter partes review from being initiated under these circumstances. Legal professionals, particularly those dealing with patent law, may need to pay marked attention to this development, given its potential implications on future patent disputes.
The patent owner argued that the application heavily relied on the same prior art which had been previously inspected by the Office. However, the PTAB discerned otherwise, even though the new art introduced shared the inventorship and involved similar technology.
This may establish a precedent where common inventorship and technology employed could not be used as a substantial defence in denials of inter partes reviews in future patent cases. As always, the full interpretation of this case will be intrinsically connected to the specifics involved, but it does give a clear signal of the way PTAB views common inventorship and technology as part of its evaluation.
In conclusion, while this incident does not dramatically redefine patent case procedures or set rigid rules, it does offer a glimpse into the PTAB’s perspective on the significance of common inventorship and technology in patent disputes. Legal professionals in this area would do well to consider this fresh lens through which such cases may now be perceived by the PTAB.