On August 2, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential two Decisions on Institution. Valve Corp. v. Elecs. Scripts Prods. Inc.
, IPR Case Nos. IPR2019-00064, -00065, -00085, Paper 10 (PTAB May 1, 2019) (designated: Aug. 2, 2019); Becton, Dickinson & Co. v. B Braun Melsungen AG
, Case No. IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (designated: Aug. 2, 2019). In Valve,
the PTAB held that General Plastic
factor 1—concerning discretionary denials under 35 U.S.C. § 314(a) for “follow-on” petitions—applied to a joined petitioner. In Becton, Dickinson
, the PTAB delineated a list of factors to consider when determining whether to exercise its discretion to deny a petition under 35 U.S.C. § 325(d) where “the same or substantially the same prior art or arguments previously were presented to the Board.”
Valve: Section 314(a) Discretionary Denials Apply to Joined Petitioner
35 U.S.C. § 314(a) provides that an IPR may not be instituted unless the petition “shows there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” This provision has been interpreted to provide the PTAB with complete discretion to deny institution. See, e.g.
, Cuozzo Speed Techs., LLC v. Lee
, 136 S. Ct. 2131, 2140 (2016) (finding that the PTAB’s “decision to deny a petition is a matter committed to the Patent Office’s discretion,” and noting there is “no mandate to institute review” under Section 314(a)).
35 U.S.C. § 315(c) allows a party to “join” as a petitioner another party’s IPR: “If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.”
For “follow-on” petitions, the PTAB has developed a list of seven “non-exhaustive” factors to consider when determining whether to exercise its discretion to deny a petition that challenges the same patent as a previous petition:
(1)whether the same petitioner previously filed a petition directed to the same claims of the same patent;
General Plastic Industries Co. v. Canon Kabushiki Kaisha
(2)whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it;
(3)whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition;
(4)the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition;
(5)whether the petitioner provides an adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent;
(6)the finite resources of the Board; and
(7)the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than one year after the date on which the Director notices institution of review.
, IPR Case No. IPR2016-01357, Paper 19 at 15–16 (PTAB Sept. 6, 2017) (precedential).
These factors have been analyzed in numerous petitions in various contexts—including “follow-on” petitions by the same petitioner as the first petition, by a new, unrelated petitioner, and by a petitioner that had previously joined an earlier IPR and now seeks to file its own petition.
, the PTAB addressed the application of the General Plastic
factors to a “follow-on” petition filed by a petitioner that had previously joined an ongoing IPR challenging the same claims of the same patent. The Patent Owner argued that the PTAB should exercise its discretion to deny the “follow-on” petition, because, by joining, “the same petitioner previously filed a petition directed to the same claims of the same patent,” per factor (1).
The PTAB agreed with the Patent Owner, finding the fact that the Petitioner joined an ongoing IPR weighed against institution. The PTAB then went on to consider the remaining General Plastic
factors and determined that denial was warranted under the circumstances.
Becton, Dickinson: Section 325(d) Discretionary Denials
35 U.S.C. § 325(d) reads, in relevant part, that “[i]n determining whether to institute or order a proceeding … the Director 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.”
In Becton, Dickinson
, the Petitioner challenged claims on multiple grounds, including as being obvious over the combination of the “Woehr” and “Tauschinski” prior art references (with “Woehr” as a “base” reference). The Patent Owner asserted that the PTAB should reject this ground under Section 325(d) because the Patent Office, during prosecution of the parent patent to which the challenged patent claimed priority, considered substantially the same prior art and arguments presented by petitioner in the instant IPR petition. In particular, the Patent Owner argued that the Patent Office considered “Woehr” as a “base” reference combined with the prior art “Rogers” reference, which the Examiner during original prosecution used in substantively the same way as petitioner used the “Tauschinski” reference in its IPR petition.
In analyzing whether to exercise its Section 325(d) discretion, the PTAB identified several “non-exhaustive” factors:
(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 for 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 warrant reconsideration of the prior art or arguments.
After walking through the factors, the PTAB exercised its discretion and denied institution based on the Woehr/Tauschinski combination because the art and petitioner’s arguments were substantively similar to the Woehr/Rogers combination and the Examiner’s rejections during original prosecution.
Of note, the institution of the IPR in Becton, Dickinson
pre-dates the Supreme Court’s SAS
decision mandating all-or-nothing institution, and so the PTAB still instituted IPR on other of petitioner’s grounds. However, because the IPR was still pending at the time of the SAS
decision, and because SAS
has been interpreted to mandated institution on all claims and all grounds, the PTAB revisited its Institution Decision and instituted on the Woehr/Tauschinski combination. As to the challenged claim considered in its Final Written Decision based on this combination, the PTAB found that petitioner had not shown it to be unpatentable.
In the post-SAS
world, where a petition includes multiple grounds but only a subset are alleged to be redundant of previously considered art and arguments under Section 325(d), the PTAB now analyzes Section 325(d) as part of its overall consideration whether to exercise its discretion to deny the entire petition outright (e.g.
, because it would be an inefficient use of the PTAB’s time and resources, per Section 314(a), to institute the petition and consider both the redundant and non-redundant grounds).
These decisions continue the PTAB’s recent trend of designating as precedential prior PTAB decisions with the goal of providing guidance to parties as they shape their arguments and strategies in IPR proceedings.