The PTAB recently designated two decisions as informative that concern its discretion to deny institution of an IPR/CBM petition. Under 35 U.S.C. § 325(d), “In determining whether to institute or order a proceeding . . . the Director may take into account whether . . . the same or substantially the same prior art or arguments previously were presented to the Office.”
The PTAB periodically designates decisions as “informative” for several reasons, including that they illustrate norms on recurring issues, guidance on issues of first impression, or guidance on PTAB rules and practices. See PTAB Standard Operating Procedure No. 2 (Rev. 9, Sept. 22, 2014).
The PTAB has already issued one precedential decision and eight informative decisions on “Multiple Proceedings” issues for IPRs. Most of these decisions focused on “follow-on” IPR petitions and listed factors that the PTAB may consider when denying institution of a second IPR petition. (See General Plastic Industrial Co., v Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19, Precedential). Three of the prior informative decisions focused on first petitions that included similar art and/or arguments as that previously presented to the Office during prior examination. (See Hospira, Inc. v. Genentech, Inc., IPR2017-00739 (July 27, 2017) (Paper 16); Unified Patent, Inc. v. Berman, IPR2016-01571 (Dec. 14, 2016) (Paper 10); Cultec, Inc. v. StormTech LLC, IPR2017-00777 (Aug. 22, 2017) (Paper 7).
These two new informative decisions expand on the “prior examination” line of decisions and list factors that the PTAB may consider when denying institution of a petition because “the same or substantially the same prior art or arguments previously were presented to the Office.”
Kayak Software Corp. v. IBM Corp.: PTAB Discretion to Deny Review of CBM Petition under 35 U.S.C. § 325(d) Based on Prior Examination
The first new informative decision, Kayak Software Corp. v. IBM Corp., Case CBM2016-00075 (PTAB Dec. 15, 2016) (Paper 16), concerns the PTAB’s discretion to deny a CBM Petition under 35 U.S.C. § 325(d).
The Board exercised its discretion under 35 U.S.C. § 325(d) and declined to institute review on the petitioner’s proffered grounds of obviousness because the primary reference and two of the three secondary references were previously “presented to and extensively considered by the Office during prosecution of the [challenged] patent.” Further, the third secondary reference (Wilson) was only cited by the petitioner for additional subject matter recited in dependent claims that the examiner did not find to be separately patentable. Therefore, the PTAB determined that, “Petitioner’s additional citation of Wilson in certain grounds, for the additional subject matter of certain dependent claims, is insufficient to persuade us that exercising our discretion under 35 U.S.C. § 325(d) is inappropriate.”
The PTAB listed factors that may weigh against the PTAB exercising its discretion under § 325(d), including whether the prior examination was brief or erroneous, or whether there was a change in circumstances since the prior examination:
There could be situations where, for example, the prosecution is not as exhaustive, where there are clear errors in the original prosecution, or where the prior art at issue was only cursorily considered that can weigh against exercising the discretion. Moreover, if the Petitioner had brought forward and explained some specific circumstances that have materially changed or of which the Office was not aware of during the prior consideration of the prior art and arguments at issue—such as, for example, changed claim constructions or new evidence related to priority dates of the prior art or challenged patent—then those could weigh in favor of institution.
The informative decision is available for download HERE.
Becton, Dickinson & Co. v. B. Braun Melsungen AG: PTAB Discretion to Deny Review under 35 U.S.C. § 325(d) Based on Prior Examination of Related Patents
The second new informative decision, Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8), concerns the PTAB’s discretion to deny an IPR Petition under 35 U.S.C. § 325(d).
The Board exercised its discretion under § 325(d) and declined to institute review on one of the petitioner’s proffered grounds of obviousness because both references (Woehr and Tauschinski) were already considered by the Office (in two separate grounds) during the examination of the parent patent, from which the challenged patent claims priority.
The PTAB listed six non-exclusive factors that the PTAB may consider when exercising its discretion under 35USC 325(d), including:
(1) the similarities and material differences between the asserted art and the prior art involved during examination;
(2) the cumulative nature of the asserted art and the prior art evaluated during examination;
(3) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection;
(4) the extent of the overlap between the arguments made during examination and the manner in which the petitioner relies on the prior art or patent owner distinguishes the prior art;
(5) whether the petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and
(6) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments.
Notably, the PTAB relied on the prior examination of a different patent (the challenged patent’s parent) to support its analysis and denial of the ground. This expansion of the PTAB’s discretion under § 325(d) could make it difficult to challenge patents that are part of large patent families.
The informative decision is available for download HERE.