Part II: The Current State Of Precedential Opinions And Denials Of Institution At The USPTO Patent Trial And Appeal Board ' Advanced Bionics And Section 325(d) Discretionary Denials

• Published date: 10 September 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Mr William C. Neer, Stacy Lewis, Thomas L. Irving and Brooke M. Wilner

Abstract

The Patent Trial and Appeal Board (Board) has the discretion to deny instituting petitions in AIA post-grant proceedings.¹And the USPTO has issued precedential opinions interpreting this power's statutory sources,² giving the Board guidance on how to exercise its discretion when deciding whether to institute petitions. This is the second article of a three-part series that discusses how the Board is applying these precedential opinions.³

Under 35 U.S.C. ' 325(d), the Director may decline to institute a petition when "the same or substantially the same prior art or arguments previously were presented to the Office."⁴Advanced Bionics LLC v. Med-EL Elektromedizinische Ger'te GMBH,⁵designated precedential on March 24, 2020, organized the Becton, Dickinson⁶factors into a two-part framework for the Board to apply when faced with ' 325(d) considerations. This article summarizes some of the Board's ' 325(d) decisions applying Advanced Bionics, the USPTO's Request for Comments, and practitioner takeaways. Part I of this series discussed denials in light of co-pending litigation,⁷and Part III will review the Board's decisions relating to serial petitions.

Section 325(d) and the Advanced Bionics Framework

When determining whether to institute a post-grant proceeding, ' 325(d) states that the Director (through delegation to the Board) "may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office."⁸

The first precedential decision to interpret this statute was Becton, Dickinson & Co. v. B. Braun Melsungen AG,⁹which outlined six factors the Board should consider when deciding whether to deny institution under ' 325(d), including:

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;

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.10

In 2020, the Advanced Bionics decision organized the Becton, Dickinson factors into a two-part framework.¹¹In part one, the Board considers "whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office."¹² The Board has noted this "is a highly factual inquiry, which may be resolved by reference to the factors set forth in Becton, Dickinson [(a), (b), and (d)]."¹³ If the answer to either of the questions in part one is yes, the Board then turns to part two. In part two, the Board determines "whether the petitioner has demonstrated that the Office erred in a...