On October 6, 2020, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) instituted an inter partes
review (IPR) proceeding, rejecting Patent Owner’s argument that the PTAB should exercise its discretion under 35 U.S.C. § 325(d) to deny institution because the same prior art and arguments were before the Patent Office Examiner during original prosecution. Sony Interactive Entertainment LLC v. Bot M8, LLC
, Case No. IPR2020-00726 (PTAB Oct. 6, 2020). In doing so, the PTAB agreed with Petitioner that the Examiner overlooked a reference’s teaching.
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 order to assess whether to exercise its discretion to deny institution of an IPR based on “the same or substantially the same prior art or arguments [having been] previously … presented to the Office,” the PTAB utilizes a two-part framework advanced in the PTAB’s precedential Advanced Bionics
Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH
- 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; and
- if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.
, IPR Case No. IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential).
In step 1, where “the record of the Office’s previous consideration of the art is not well developed or silent,” the PTAB proceeds to step 2, and allows a “petitioner [to] show the Office erred by overlooking something….” Id.
In the instant IPR, at step 1, Patent Owner argued that the same or substantially the same art and arguments were before the Examiner because one of the primary references relied upon by Petitioner was presented to the Examiner during original prosecution and because the arguments advanced in the Petition were allegedly substantially similar to, and cumulative of, the arguments considered by the Examiner.
Petitioner countered that (i) the reference was “submitted with only an English abstract but without an English-language translation of the reference itself,” (ii) never discussed or used by the Examiner as a basis for rejection, and (iii) the Petition presents new arguments in that it asserted a different theory of invalidity (including using the reference differently and presenting additional prior art references).
Because the PTAB found “the record to be insufficiently developed to enable [it] to determine whether [the prior art reference] was before the Examiner such that the Examiner determined the patentability of the claims in view of [the prior art reference,” it continued to step 2.
At step 2, the PTAB “determine[d] that the information presented in the Petition indicates that the grounds involving [the prior art reference] are sufficiently strong such that, assuming [the reference] was before the Office, the Examiner overlooked the specific teachings of [the reference] in allowing the application to issue as a patent” because the record is silent as to (i) the Examiner’s specific reasons for allowance and (ii) the extent of Examiner’s consideration of the full teachings of the reference. It also noted that there were additional grounds in the Petition that did not rely on the reference previously before the Examiner.
Accordingly, the PTAB declined to exercise its Section 325(d) discretion, and, on the merits, instituted IPR.
This decision is the latest in a continuing trend of the PTAB’s reluctance to exercise discretion based on previously considered art and arguments—which stands in stark contrast to the PTAB’s increased willingness to exercise its discretion to deny institution under the Fintiv
factors due to parallel district court proceedings.