Matthew McCloskey

If a recent decision denying institution of an inter partes review (IPR) is any indicator, the answer to the titular question seems to be no, the Board does not routinely review a challenged patent’s prosecution history—even when the history includes a prior Board decision construing claim terms at issue in the IPR. In Apple Inc. v. Uniloc 2017 LLC, IPR2019-00753, Paper 7 (PTAB. Sep. 16, 2019), the Board majority denied institution, finding certain claimed subject matter missing from Apple’s prior art—despite the Board’s earlier finding in a prosecution appeal that the very same subject matter was disclosed and obvious based on different prior art. Making the apparent oversight even more remarkable, one member of the Patent Trial and Appeal Board (PTAB) majority had actually authored the earlier prosecution appeal decision.