In the past several months, the PTAB has designated as “informative” five decisions in which the Board exercised its discretion to deny institution under 35 U.S.C. § 325(d). That statute provides that the board may reject a petition if “the same or substantially the same prior art or arguments previously were presented to the Office.” The informative decisions, while not binding on subsequent panels, are meant to provide guidance for parties appearing before the Board.
Below are some important takeaways from these informative decisions:
- A new reference that is cumulative of a reference considered during prosecution may be treated as an old reference. Unified Patents Inc. v. Berman, IPR2016-01571, Paper 10 (PTAB Dec. 14, 2016).
- Institution may be denied under § 325(d) because the same arguments and art were addressed during prosecution of the challenged patent’s parent and sibling applications. Cultec Inc. v. Stormtech LLC, IPR2017-00777 , Paper 7 (PTAB Aug. 22, 2017); Kayak Software Corp. v. IBM Corp., CBM2016-00075, Paper 16 (PTAB Dc. 15, 2016).
- Without new evidence, the Board may decline to consider written description, enablement, and priority issues addressed during prosecution. Hospira Inc. v. Genentech Inc., IPR2017-00739, Paper 16 (PTAB July 27, 2017).
- Even a new combination of previously-considered references may be treated as having already been addressed if the obviousness argument is not substantively new. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017).
The Becton decision also sets forth a helpful list of non-exclusive factors that the Board may consider in evaluating whether to exercise its discretion to deny institution:
- the similarities and material differences in the art;
- whether the art is cumulative;
- the extent to which the art was already evaluated during examination, including whether it was the basis for a rejection;
- the extent of overlap in arguments;
- whether the petitioner has pointed out sufficiently how the Examiner erred; and
- the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments.
These decisions show that the Board will closely review the prosecution history of the challenged patent and related patents, and is willing to exercise its discretion to deny institution if the issues raised in the petition have been previously addressed. They also show that the Board looks to the substance of the issues addressed rather than just the specific combinations of references.
Petitioners should carefully review the prosecution history of the challenged patent and all related patents and consider explaining in the petition how the arguments differ substantively from what has already been addressed.
Patent owners responding to a petition should also carefully review the prosecution history and, where appropriate, take advantage of the Preliminary Response to argue that the petition offers nothing new.