On March 24, 2020, the Precedential Opinion Panel of the Patent Trial and Appeal Board (PTAB) designated as precedential an opinion that sets forth a two-part inquiry for determining when the PTAB can deny institution of inter partes review (IPR) proceedings under 35 U.S.C. 325(d) as duplicative of art and arguments previously presented in patent prosecution.
35 U.S.C. 325(d) states that, in determining whether to institute an IPR, "the [PTAB] Director may take into account whether, and reject the [IPR] petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office." The Director's determination to institute or deny an IPR is nonappealable. 35 U.S.C. 314(a).
In Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (Feb. 13, 2020) (designated precedential on March 24, 2020), the PTAB established a "two-part framework" for determining whether § 325(d) applies: "(1) whether the same or substantially the same art previously was presented to the [Patent] Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the [IPR] petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims."
According to Advanced Bionics, "[i]f a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review. If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability."
Advanced Bionics further explains that:
- "Previously presented" art and argument encompass art and argument raised by the patent examiner or the patentee during prosecution of the original patent application, and any subsequent reexamination, reissue or post-grant AIA proceedings.
- Whether previously presented art or argument is "substantially the same" as that asserted in the IPR petition can be evaluated using "factors (a), (b) and (d)" from the PTAB's prior precedential decision Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (Dec. 15, 2017), i.e., (a) the similarities and material differences between the asserted art and the prior art involved during examination 1; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; and (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art.
- Whether the Patent Office material erred has can be evaluated using Becton, Dickinson "factors (c), (e), and (f)," i.e., (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (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. "For example, if the record of the Office's previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f)."
- If, in the first part of the two-part 325(d) framework, the PTAB determines that "the same or substantially the same art" previously was presented to the Patent Office, it need not reach whether "the same or substantially the same arguments" previously were presented.
1 The PTAB clarified that "although Becton, Dickinson factors (a) and (b) pertain to art evaluated 'during examination,' these factors more broadly provide guidance as to whether the art presented in the petition is the 'same or substantially the same' as the prior art previously presented to the Office during any proceeding, including prior AIA proceedings."