Issue 37: PTAB Trial Tracker

• Published date: 16 June 2022
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Goodwin Procter LLP
• Author: Goodwin Procter LLP

Expert Testimony Alone Insufficient to Show Examiner's Material Error in Considering Prior Art

In Nespresso USA, Inc. v. K-fee System GmbH, IPR2021-01222, Paper 9, at 25 (PTAB Jan. 18, 2022), the Board denied institution under 35 U.S.C. ' 325(d), rejecting Petitioner's argument that "the examiner erred by allowing the challenged claims to issue 'without comment and without considering the art in this petition.'" The Board explained that "[w]here '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' Becton, Dickinson factors (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]." Id. at 26. The Board stated that "[t]he closest Petitioner comes to addressing those issues is by observing 'the obviousness analysis' in the Petition 'is supported by expert testimony, which the Examiner did not have.'" Id. Because this argument was "undeveloped by further analysis," it was "ineffective to show that the Examiner materially erred by failing to discuss the same prior art combinations advanced in the Petition" or that "additional evidence and facts presented in the Petition warrant reconsideration of the prior art." Id.

Takeaway: If relying on expert testimony to support an argument that the Examiner materially erred in considering the patentability of challenged claims, a Petitioner should "meaningfully assess the record of examination." It is Petitioners' burden to show error, and merely pointing to new expert testimony, without further analysis, will not suffice to meet that burden.

STRATEGIC CONSIDERATIONS WHEN FILING MULTIPLE PETITIONS

Discretionary Denial Not Appropriate Where Multiple Petitions Present Substantively Distinct Challenges

In Trend Micro Inc. v. CUPP Computing AS, IPR2021-01236, Paper 16, at 22 (PTAB Jan. 19, 2022) the Board declined to exercise its discretion to deny institution based on the filling of multiple petitions because it found that "Petitioner's approach ' using two different petitions to present substantively distinct challenges ' is not unreasonable."

Petitioner originally filed two IPRs and two PGRs challenging the patent at issue; IPR2021-01236 and PGR2021-0100 challenged claims 1, 9, 16, and 24, while IPR2021-01237 and PGR2021-00101 challenged claims 1, 7, 9, 16, 22, and 24. Id. at 21. The Petitioner admitted that the PGRs were duplicative of the IPR petitions and were only filed in the event the Board decided the patent at issue was a post-AIA patent. Id. The Board held it was not a post-AIA patent and thus the PGR petitions were denied. Id. at 22.

Patent Owner argued that IPR2021-01236 should be denied institution under 35 U.S.C. ' 314(a) because it was not necessary nor proper in light of IPR2021-01237. Id. at 21. Petitioner maintained that there were material differences between the IPR petitions that supported instituting both: (1) the IPR petition relied on different prior...