By Matt Johnson

Last week, the PTAB designated two 35 U.S.C. § 325(d) cases precedential and one informative.  These cases discuss the Board’s process for deciding when to use their discretion to deny institution because a Petition raises issues that the Patent Office previously considered in other proceedings (e.g., during prosecution, prior reexams).

The PTAB Litigation Blog will report on each of these decisions in detail in the coming days.

Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469 (PTAB Feb. 13, 2020) (Paper 6) (precedential)

This decision denies institution of an inter partes review based on 35 U.S.C. § 325(d), explaining that the Board uses a two-part framework for exercising discretion under § 325(d). After applying the framework, the Board determined that the Petition presents the same or substantially the same prior art previously presented to the Office and that the Petitioner failed to show that the Examiner materially erred as to the patentability of challenged claims.

PUMA North America, Inc. v. NIKE, Inc., IPR2019-01042 (PTAB Oct. 31, 2019) (Paper 10) (informative)

This decision denies institution of an inter partes review based on 35 U.S.C. § 325(d), where the Examiner twice rejected the challenged claims over the same combination of references in the same manner the Petitioner proposed, and the Petitioner failed to show examiner error.

Oticon Medical AB v. Cochlear Limited, IPR2019-00975 (PTAB Oct. 16, 2019) (Paper 15) (precedential as to sections II.B and II.C)

This decision to institute declines to exercise discretion under 35 U.S.C. § 325(d) after determining that the cited art is not substantially the same as the art considered during prosecution and that the Examiner erred in not considering the art during prosecution. The decision also declines to exercise discretion under 35 U.S.C. § 314(a), distinguishing NHK Spring Co. v. IntriPlex Technologies, Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential), because no trial date had been set in the co-pending district court case, and the IPR would not be duplicative of the district court consideration of validity. 

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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.

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