On March 21, 2018, the PTAB designated two decisions as “informative” that denied institution for presenting prior art that had been previously presented during prosecution. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8); and Kayak Software Corp. v. IBM Corp., CBM2016-00075 (PTAB Dec. 15, 2016) (Paper 16). These Informative Decisions are based on the AIA statutory provision of 35 U.S.C. § 325(d), which permits the PTAB to deny institution of petitions that present grounds of unpatentability based on prior art that had been previously presented to the Office.
Becton – Six non-exclusive factors for deciding whether to deny institution under § 325(d):
In the Becton, Dickinson & Co. decision, the petition asserted an obviousness ground based on the same primary reference as had been asserted during prosecution of the parent application of the challenged patent. The petitioner asserted that the secondary reference had not been previously presented to the Office and, therefore, the obviousness ground had not been previously presented. The patent owner countered that the secondary reference was substantively the same as a secondary reference considered by the examiner during prosecution. The PTAB articulated six non-exclusive factors in considering whether to exercise its discretion to deny institution under § 325(d):
(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. Becton at 17-18.
The PTAB evaluated the six factors and denied institution, finding that the newly-cited secondary reference was cumulative to the secondary reference cited by the examiner, and the petition had presented “only a nominally different combination of prior art” and “the same arguments as were meritoriously overcome by the Applicant during prosecution . . . .” Id. at 28.
Kayak – Combining references that were previously considered during prosecution:
The Kayak Software Corp. decision involved prior art that had been previously considered during prosecution by the examiner and by the PTAB during three different appeals. Kayak’s petition asserted the claims were unpatentable as obvious over a combination of three prior art references. During prosecution, every two-reference combination of these three prior art references had been considered by the examiner or the PTAB, and all three references were identified on the face of the patent as “cited by the examiner.”
The PTAB determined that although this three-reference combination was technically a new combination, a conclusion that this new combination was not subject to consideration under § 325(d) “would exalt form over substance.” Kayak at 9. The PTAB articulated several instances in which it might be appropriate to institute trial over previously-presented prior art, including “where there are clear errors in the original prosecution,” “where the prior art at issue was only cursorily considered,” where there are “changed claim constructions,” and where there is “new evidence related to priority dates of the prior art or challenged patent.” Id. at 11. The PTAB found that the present case provided no such circumstance and denied institution.
Other Informative Decisions on § 325(d)
In addition to these two decisions, the PTAB has designated numerous other informative decisions on § 325(d), including seven institution decisions designated in 2014 [Patent Trial and Appeal Board - Multi-Petition Challenges of a Patent], and two institution decisions in 2017 [PTAB Designates as "Informative" Three Discretionary Denials of IPR Institution Decisions]. The earlier-designated informative decisions, though at times followed, were sometimes distinguished by later PTAB panels [Patent Trial and Appeal Board - Multi-Petition Challenges of a Patent]. Over the last year, the PTAB has increased its focus on follow-on petitions [USPTO Chat with the Chief: An Analysis of Multiple Petitions in AIA Trials] and designated one decision as “precedential” that provided seven non-exclusive factors for denying institution of petitions that challenge a patent that had been previously challenged by another petition [PTAB Designates as Precedential the General Plastics Decision on Follow-On Petitions], though this decision is based on the AIA statutory provision 35 U.S.C. § 314(a) instead of § 325(d).
These two newest informative decisions (Becton and Kayak) provide guidance on application of § 325(d) to prior art cited by the examiner during prosecution, which contrasts with most of the previously-designated informative decisions that typically related to follow-on petitions.