35 U.S.C. § 325(d) gives the Patent Trial and Appeal Board (PTAB or Board) the authority to deny institution of a post-grant proceeding “because, the same or substantially the same prior art or arguments were previously presented to the Office.”
In a recent post, we wrote about the designations of PTAB decisions. Among these designations, the PTAB designates a decision as informative when it provides the PTAB’s general consensus on recurring issues and guidance to examiners, appellants, patentees, or petitioners in areas where parties routinely misapply the law.
Earlier this week, the PTAB designated as informative two decisions denying institution of inter partes review: Kayak Software Corp. v. International Business Machines Corp., Case CBM2016-00075 (PTAB Dec. 15, 2016) and Becton, Dickinson & Company v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017). In each decision, the PTAB denied institution based on its discretionary power under 35 USC § 325(d) because the same or substantially the same prior art or arguments were previously presented to the US Patent and Trademark Office.
In Kayak, the Board declined to institute review of the claims under obviousness grounds because the record indicated that the cited prior art was previously presented to and extensively considered by the Office during prosecution. The Board was not persuaded that the incremental addition of an already-considered reference was sufficient to avoid § 325(d), but explained that the presence of certain factors, including a limited prosecution history, clear errors in the prosecution, and/or the cursory consideration of the prior art may weigh against the exercise of discretion to deny institution under § 325(d).
In Becton, the Board declined to institute review of the claims under certain obviousness grounds by weighing a non-exclusive list of factors, which includes (1) the similarities and material differences between the asserted art and the prior art involved during examination; (2) the cumulative nature of the asserted art and the prior art evaluated during examination; (3) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis of rejection; (4) 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; (5) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (6) the extent to which additional evidence and facts presented in the Petition warranted reconsidered of the prior art or arguments. “With only a nominally different combination of prior art and considering that Petitioner presents the same arguments as were meritoriously overcome by the Applicant during prosecution,” the Board explained, “based on our evaluation of the non-exclusive factors above, we are persuaded that exercising our discretion under 325(d) on this particular ground is appropriate.”
These two informative decisions suggest that an incremental addition of an already considered reference or a nominally different combination of prior art may be insufficient to avoid denial of institution under § 325(d) unless new evidence or arguments are presented to convince the Board that the examiner’s earlier determination was unreasonable.