The PTAB recently designated as “informative” two decisions exploring how 35 U.S.C. § 325(d) applies to art or arguments previously presented to the Office at the institution stage: Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper No. 8 (PTAB Dec. 15, 2017), and Kayak Software Corp. v. International Business Machines Corp., CBM2016-00075, Paper No. 16 (PTAB Dec. 15, 2016). In those decisions, the Board identified several factors that guide its discretion in applying § 325(d). The Board underscored the broad relevance of those factors by designating Becton Dickinson and Kayak Software as informative.

In both cases, the Board invoked § 325(d) to deny institution of asserted obviousness grounds based on references that had been considered during original prosecution of the challenged patents. The examiner had not addressed the precise combinations of prior art references asserted in each of the petitions, but the Board concluded that incremental, non-substantive differences in asserted secondary references did not distinguish the patentability issues previously considered by the Office. In so doing, the Board identified factors that may influence the § 325(d) analysis. The following list consolidates the non-exclusive factors set forth in Becton Dickinson and Kayak Software:

  1. the similarities and material differences between the asserted art and the prior art involved during examination;
  2. whether and to what extent the original prosecution was exhaustive in nature;
  3. the cumulative nature of the asserted art and the prior art evaluated during examination;
  4. the extent to which the asserted art was previously evaluated, including whether the prior art formed the basis for rejection;
  5. 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;
  6. whether petitioner has pointed out sufficiently how the examiner erred in evaluating the asserted prior art; and
  7. the extent to which new facts and circumstances presented in the petition warrant reconsideration of the prior art (for example, new claim constructions or new evidence relating to priority dates).

Becton Dickinson and Kayak Software extend the Board’s previous commentary on § 325(d) and provide a roadmap for parties preparing or facing petitions that draw on prior art previously presented to the Office. While the Board chose to decline institution in these cases, the analyses provided in its opinions should assist petitioners in understanding when previously considered prior art may best be used in a petition and how to make a showing that such references should be reconsidered.