Petitions for Inter Partes Review Citing Same Prior Art May be Decided Differently

The Board denied the petitioner's request for rehearing of an earlier decision partially denying institution of inter partes review and rejected the arguments regarding the institutions of earlier petitions. "[The petitioner] contends that its Petition presented the 'same evidence' that was presented in [proceedings brought forth by two other petitioners] and that because the Board found 'equivalent disclosures' of [a prior art reference] sufficient to anticipate and/or render obvious claims 1-6 and 12 in those cases, we must do the same here. . . . It simply is not true that the records in all three cases present the 'same evidence.' . . . The differences between [the expert's] declaration in the present case and the one submitted in the [related] proceeding are material, and lead to the different results in our institution decisions. . . . The evidence of inorganic particles in [the prior art reference] was considered in our Decision to Institute and, when considered in light of the Petition and [the expert's] declaration in this proceeding, found to be insufficient to establish a reasonable likelihood of unpatentability. . . . The rule [the petitioner] proposes—that every Petition citing the same art must be decided identically, regardless of the arguments set forth in the Petition—ignores the adversarial, adjudicative nature of an inter partes review.."

Petition for Inter Partes Review by Mitsubishi Plastics, Inc., IPR2014-00524 (PTAB November 21, 2014, Order) (Crumbley, APJ)