By: Ed Mantilla
This second installment examines discretionary reasons for which the Patent Trials and Appeals Board (PTAB) may deny a petition to institute Inter Partes Review. While Part I covered discretionary denials of institution under 35 U.S.C. § 314(a), Part II examines when a petition may be denied institution under 35 U.S.C. § 325(d) when “the same or substantially the same prior art or arguments previously were presented to the Office.”
35 U.S.C. § 325(d) provides that the Director may elect not to institute a proceeding if the challenge to the patent is based on matters previously presented to the Office. Specifically, § 325(d) states, in pertinent part:
In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.
The PTAB has designated several cases as precedential that shed guidance regarding denial of institution under § 325(d). In one such case, Advanced Bionics, the Board laid out a two-part framework for its analysis: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. 
(a). The similarities and material differences between the asserted art and the prior art involved during examination;
(b). The cumulative nature of the asserted art and the prior art evaluated during examination;
(c). The extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection;
(d). The extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art;
(e). Whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and
(f). The extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.
In implementing the two-part framework from Advanced Bionics, Becton Dickinson factors (a), (b), and (d) help support a conclusion that the same or substantially the same art or arguments were previously presented to the Office under part 1 of the framework, and Becton Dickinson factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office under part 2 of the framework. 
Particularly in Advanced Bionics, petitioner’s asserted grounds 1 and 2 in the petition relied on a reference by Zimmerling, which the Examiner had evaluated during prosecution, in combination with the Charvin, Chang, and Schmid references, which the Examiner did not.  Petitioner asserted that Zimmerling disclosed most claim limitations, while Charvin, Chang, and Schmid disclosed the remainder.  The Board found that Petitioner relied on Charvin, Chang, and Schmid in the same manner that the Examiner relied on Zimmerling during prosecution for disclosure of those limitations.  The Board therefore found there were no “significant and material differences between the prior art asserted in this Petition and the prior art evaluated during prosecution” and that the prior art in asserted grounds 1 and 2 was the “same or substantially the same [as] prior art that was previously presented to the Office.” 
Regarding part two of the framework, the Board found that Zimmerling contained the limitations alleged to be disclosed by Charvin and Schmid references, and the existence of the limitations in these additional references therefore did not persuasively demonstrate that the Examiner erred in a manner material to the patentability of challenged claims.  Thus, the Board exercised its discretion and denied institution under § 325(d).
In another case relating to § 325(d), Oticon Medical, the PTAB designated two sections of its decision to institute an IPR as precedential.  Analyzing the Becton Dickinson factors, the Board found that the petition asserted new, noncumulative prior art.  Thus, it declined to exercise its discretion to deny the petition under § 325(d). In Oticon Medical, petitioner asserted that the claims were unpatentable on four separate grounds.  Though the primary reference for each ground of the petition had been previously considered during prosecution,  but the secondary reference for the grounds (“Choi”) had not.  Patent owner argued that the circumferential grooves of Choi were cumulative over a set of grooves of a previously considered reference, but the Board disagreed. Even though both references disclosed a set of grooves, the Board found that the structure and purpose of each groove set were different. The Board also found that Choi provided an additional advantage and thus a different motivation to combine that had not been previously considered.  Thus, the Board found that Choi was not cumulative.  The Board also determined that the Examiner erred by simply not being aware of the teachings of Choi, and thus did not consider Choi’s circumferential grooves during prosecution. 
Additionally, the Board also declined to exercise their discretion under 35 U.S.C. § 314(a).
Petitioners raising prior art previously considered during prosecution or applied in a similar way as previously considered art should consider raising new facts and arguments that were missed or misinterpreted by the Examiner. For example, petitioners should highlight any new motivation or rationale for combining references disclosed in prior art that had not previously been considered by the Examiner.
Patent owners should carefully review the petition with the benefit of legal counsel and examine if the art being asserted is the same or substantially the same as the art previously considered during prosecution. Such review includes detailed technical and legal comparisons to determine the distinctiveness of the asserted art against the previously considered art.
After such review, patent owners should analyze the Becton, Dickinson factors in their Patent Owner’s Preliminary Response to argue that the Board should exercise its discretion under 35 U.S.C. §§ 314(a) and 325(d) and deny institution of the petition for IPR.
This article is the second part in a series on the Inter Partes Review procedure for challenging the validity of a US Patent. Part one titled “To Institute or not to Institute: Reasons for the PTAB not to grant a petition for Inter Partes Review” can be found here.
 35 U.S.C § 314(a), “the Director may not authorize an inter partes review…unless the Director determines that the information presented in the petition…shows that there is reasonable likelihood that the petitioner will prevail with respect to one of the claims….”
 Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential)
 Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)
 Id. at 17-18
 Advanced Bionics, 10.
 Id. at 13.
 Id. at 14.
 Id. at 16, 19.
 Id. at 22.
 Id. at 20.
 Id. at 5.
 Id. at 20.
 Id. at 10.
 Id. at 15.
 Id. at 16.
 Id. at 19.