By Robby Breetz and Matt Johnson

As we noted here, the PTAB recently designated two 35 U.S.C. § 325(d) cases precedential and one informative.  Here is an in depth review of the informative decision.

On March 24, 2020,the PTAB designated two sections of the Oticon Medical AB v. Cochlear Ltd. decision as precedential.  IPR2019-00975, Paper 15 (P.T.A.B. Oct. 16, 2019) (“Decision”).  The precedential sections decline to deny institution of a petition under § 325(d)[1] and § 314(a).[2]  Consequently, the Board instituted review of U.S. Patent No. 9,838,807, which is directed to cranial anchoring elements for hearing devices.  (Decision at 1-3.)

Declining To Deny Petition Under § 325(d)

Analyzing the Becton Dickinson factors,[3] the Board found that the petition asserted new, noncumulative prior art.  (Decision at 20.)  Thus, it declined to exercise its discretion to deny the petition under § 325(d).  (Id.)

The petition asserted the claims were unpatentable on four separate grounds.  (Decision at 5.)  The primary reference for each ground was previously considered during prosecution.  (Decision at 10.)  The petition’s secondary reference (“Choi”), however, had not been previously considered.  (Decision at 10.)  The patent owner argued that the circumferential grooves of Choi were cumulative over a set of grooves of a previously considered reference, but the Board disagreed.  (Decision at 15.)  Even though both references disclosed a set of grooves, the structure and purpose of each groove set were different.  (Id.)  The Board also found that Choi provided an additional advantage and thus a different motivation to combine had not been previously considered.  (Decision at 16).  Thus, the Board found that Choi was not cumulative.  (Id.)

Even though the Examiner considered several references used by the petition, the Board found that the circumferential grooves of Choi were never evaluated and thus the petition’s arguments did not overlap with arguments considered during examination.  (Decision at 19.)  The Board determined that the Examiner erred by simply not being aware of the teachings of Choi, and thus did not consider Choi’s circumferential grooves during prosecution.  (Id.)

Declining To Deny Petition Under 314(a)

The Board declined to exercise its discretion under § 314(a) because the IPR would not be directly duplicative of the district court action and because there was no trial date set at the district court.  (Decision at 24.)

The patent owner made several arguments as to why the Board should decline institution under § 314(a) including: (1) the petitioner waited one year after the filing of district court litigation to file the IPR; (2) the petitioner benefited from patent owner’s responses in the district court litigation and used them as a roadmap for the petition; (3) the petitioner is using the IPR to stall district court litigation; and (4) the Board should conserve its resources because the district court will likely determine the validity of the challenged claims in a similar timeframe.  (Decision at 20.)

The Board refuted all four of the patent owners’ arguments.  First, the Board found the petition was timely because the petition was filed within one year of service of the complaint in the district court proceeding.  (Decision at 22.)  Second, the Board then distinguished from NHK[4] stating that the Board’s analysis would not be directly duplicative of the district court’s consideration of validity.  (Decision at 23.)  Third, the Board found the IPR caused no delay in the district court litigation because there was no stay.  (Id.)  Finally, the Board distinguished from NHK because there was no trial date set yet in the district court litigation.  Thus, the Board found these factors did not weigh in favor of denying institution under § 314(a).  (Decision at 24.)


The Board may decline to deny a petition under § 325(d) even when just a single reference was not previously considered by the Examiner if that reference is deemed not cumulative.  The Board may also decline to deny a petition under § 314(a) when there has been no trial set in copending district court litigation and when the IPR would not be directly duplicative of the district court considerations of validity.


[1] Section 325(d) allows the Board to express discretion to deny a petition when “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d).

[2] The Board also has discretion to deny institution under 35 U.S.C. 314(a).  Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016).  The § 314 inquiry is “a balanced assessment of all relevant circumstances in the case, including the merits.”  Office Trial Practice Guide Update (July 2019) (available at, at 25.  This can be where the “effect . . . on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings,” favors denying a petition.  (Id.)

[3] Becton Dickinson provides six non-exclusive factors to determine whether the Board will exercise its discretion 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 prior art or arguments.”  Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential).

[4] NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018) (precedential) (“NHK”).

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.