In Samsung Electronics Co. v. E-Watch, Inc., the PTAB rejected an IPR Petitioner’s attempt to challenge the correctness of the USPTO’s decision on a Petition to Revive during the original prosecution. IPR2015-00612, Paper 8 (Jul. 8, 2015).

The Petitioner asserted one ground of unpatentability under 35 U.S.C. §102(b), alleging that Monroe (Published PCT Application WO 99/035818) anticipated the claims. Monroe was published on July 15, 2009, while the subject patent issued from a child application filed on January 3, 2003, which was a divisional of a parent application filed on January 12, 1998. The parent application, however, was abandoned on April 10, 2001, for failure to file a timely response to an office action. Subsequently, the child application was filed along with a Petition to Revive the parent application on the basis of “unintentional abandonment,” which was granted by the USPTO.

The Petitioner argued that the parent application was “purposefully” abandoned, and thus the USPTO should have denied the Petition to Revive, thereby resulting in a lack of co-pendency between the child and parent applications. Given the alleged lack of co-pendency, the Petitioner argued that the claims of the patent were not entitled to the earlier filing date of the parent application, and that Monroe was available as prior art against the claims of the patent.

The Board rejected the Petitioner’s argument, stating that it had no jurisdiction to either (1) review and overturn the USPTO’s decision on the Petition to Revive, or (2) ignore that decision and make its own determination on whether the parent application should have been revived on the basis of “unintentional” abandonment.

The Board drew a distinction between substantive and procedural issues that impact a determination of patentability, stating that it had jurisdiction to review only the former: “Where the issue is the status of an applied reference as prior art, viewed in light of a patent owner’s effort to antedate the date of the reference . . . , we can review the evidence submitted to show a date of invention prior to the date of the reference. That issue is substantive and central to the merit of the patentability determination. On the other hand, where the issue is the status of an application as abandoned or revived, the matter is procedural and not central to the substantive merit of a patentability determination.” Since anticipation based on Monroe was the only ground of unpatentability asserted by the Petitioner, the Board denied the IPR petition.

As this decision shows, Petitioners must keep in mind the difference between procedural issues, which the Board cannot review (e.g., the correctness of a decision granting a Petition to Revive), and substantive issues, which the Board can review (e.g., antedating the date of a reference, or lack of written description or enabling disclosure in a parent application).

A guideline to keep in mind is that any issue that would not have been appealable during patent prosecution is likely an insufficient ground for instituting an IPR. In other words, do not expect the PTAB to institute an IPR on grounds that it could not have reviewed during prosecution.