On March 21, 2018, the Board designated as “informative decisions” two PTAB decisions in which review was denied under 35 U.S.C. § 325(d). According to the Board’s standard operating procedures, an informative decision provides guidance on (1) Board norms on recurring issues, (2) issues of first impression, and (3) Board rules and practices. However, an informative decision is not binding authority.
Section 325(d) gives the Board the authority to deny a petition if “the same or substantially the same prior art or arguments previously were presented to the Office.” Recently, the Board has been relying upon 325(d) more frequently to deny petitions when the petition’s challenges were based on art or arguments that were previously considered during prosecution.
The following decisions denying institution are now considered “informative.”
Kayak Software Corp. v. Int’l Business Machines
In Kayak Software Corp. v. Int’l Business Machines, Corp., CBM 2016-00075 (PTAB Dec. 15, 2016) (Paper 16), the Board exercised its discretion under 35 U.S.C. § 325(d) to deny institution of a Covered Business Method (CBM) review. During prosecution of the challenged patent, three references relied upon in the CBM petition had been extensively considered. However, the specific combination of references asserted as a ground in the petition had not been considered during prosecution.
After considering the prosecution history–which included at least 86 pages addressing the first reference, at least 38 pages directed to the second reference, and at least 72 pages addressing the third reference–the Board concluded that “instituting review solely because the exact combination of [the three references] advanced by Petitioner was not set forth in the prosecution history would exalt form over substance.” Accordingly, the Board exercised its discretion under § 325(d) and denied institution.
In this decision, the Board also gave examples of situations that could weigh against the Board exercising its discretion under § 325(d), even if the prior art had been considered during prosecution. For example, when the prosecution history is not “exhaustive,” where there are clear errors in the original prosecution, or if the prior art was only cursorily considered, these factors could weigh against a petition being denied under § 325(d).
Becton, Dickinson & Co. v. B. Braun Melsungen AG
In Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8), the Board exercised its discretion under 35 U.S.C. § 325(d) to deny an obviousness ground that relied on references that were similar to references that were considered during prosecution. In deciding to exercise its discretion under § 325(d), the Board weighed the following non-exclusive factors:
- The similarities and material differences between the asserted art and the prior art involved during examination;
- The cumulative nature of the asserted art and the prior art evaluated during examination;
- The extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection;
- The extent of the overlap between the arguments made during examination and the manner in which the petitioner relies on the prior art or the patent owner distinguishes the prior art;
- Whether the petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and
- The extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments.
After analyzing each of these factors, the Board decided that it was appropriate to exercise its discretion under § 325(d) and deny the petition as to the obviousness ground.