Two decisions regarding whether the same or substantially the same prior art or arguments have already been considered by the USPTO have been designated as “Informative”

April 23, 2018
Patent Office Trials Blog

Becton,  Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (Decision, Institution of Inter Partes Review) (Informative).

Kayak Software Corp. v. IBM Corp., CBM2016-00075, Paper 16 (PTAB Dec. 15, 2016) (Decision, Declining to Institute Covered Business Method Patent Review) (Informational).

In two decisions, designated as informative on March 21, 2018, the Board has offered guidance on when the Board will exercise its discretion, under 35 U.S.C. § 325(d), to deny institution of a post-grant proceeding because the USPTO has already considered the same or substantially the same prior art or arguments. “Informative” decisions provide the Board’s guidance on an issue but are not binding authority.

In Becton, Dickinson and Co., the Board identified six factors commonly considered when evaluating whether 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 Board was careful to note this list is “non-exclusive” and merely a list of commonly considered factors. Becton at 17 (emphasis in original).

In applying the factors, the Board gave little weight to the Petitioner’s use of a new reference, finding the new reference was mostly cumulative.  The Board also gave little weight to the Petitioner’s submission of an expert declaration because the declaration did not: why the new reference would not be cumulative; explain how the Patent Owner’s previous arguments, made during prosecution, were in error; or offer sufficient underlying facts or data to support its position.  Becton at 25, 27, 28. Accordingly, the Board found the factors weighed in the Patent Owner’s favor and denied institution on that ground. Becton at 28.

In Kayak Software Corp., the Board considered the effect of at patent’s prosecution history on determinations under 35 U.S.C. § 325(d).  The patent at issue was filed over 12 years before it was issued which led to an extensive prosecution history including seven Office Actions and two decisions by the Board, both of which entered new grounds for rejection. See Kayak at 6-7; see also U.S. Patent No. 7,072,849.

The Petition was based on various combinations of four prior art references.  However, three of these references had been thoroughly considered during the patent’s prosecution by both the Examiner and the Board.  Kayak at 8.  The prosecution history contained dozens of pages devoted to each reference. Kayak at 9.  As such, the Board was unconvinced that any combination of these three references, regardless of whether or not that exact combination had been used in a rejection, could be the basis for institution in light of § 325(d).  Kayak at 9. The Board found the fourth reference to be cumulative in part because the Petitioner relied on one of the three references to teach the same subject matter in another part of the Petition.  Kayak at 10. The Board noted this was at least circumstantial evidence that the fourth reference was substantially similar.  Kayak at 10.

Additionally, in dicta, the Board offered several possible scenarios in which similar prior art could still lead to institution, such as: clear error in the original prosecution; when the prior art was only cursorily considered; or raising an issue the USPTO was unaware of, like evidence of priority dates. Kayak at 11.


Brendan Seth O'Shea

Email: boshea

Brendan O’Shea is an associate in the firm’s Electrical and Mechanical Patent Prosecution practice group, where he prosecutes patent applications for domestic and international clients.

Mr. O’Shea’s patent prosecution experience spans a wide range of technologies, including software and Internet-based applications, business methods, telecommunications, biomedical devices, and mechanical arts.