The Patent Trial and Appeal Board recently designated two decisions as precedential and a third as informative in cases where the PTAB considered whether to exercise 35 USC § 325(d) discretion to deny petitions where the same or substantially the same prior art or arguments had previously been presented.
The Patent Trial and Appeal Board (PTAB) on March 24 provided further guidance on when it is appropriate to exercise its discretion under 35 USC § 325(d) to deny petitions for inter partesreview by designating two decisions as precedential (Advanced Bionics LLC v. MED-EL Elektromedizinische Geräte GmbH in its entirety and portions of Oticon Medical AB v. Cochlear Ltd.) and a third decision (Puma North America Inc. v. Nike Inc.) as informative.
Under the America Invents Act, the PTAB has considerable discretion to determine whether to institute inter partesreview. 35 USC § 325(d) states, in pertinent part:
In 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.
Patent owners have used this language in the past to encourage the PTAB to decline to institute inter partesreview when the presented grounds include prior art previously considered by the Office.
In Advanced Bionics, the PTAB explained that 35 USC § 325(d) identifies two separate issues that the PTAB should consider in exercising discretion to deny institution of inter partesreview:
The PTAB explained that these are “highly factual inquir[ies]” and expand on the factors set forth in an earlier precedential opinion, Becton, Dickinson & Co. v. B. Braun Melsungen AG.
If the PTAB finds that a petition presents the same or substantially the same art or arguments, then it will proceed to the second step of the two-part framework and deny review unless the petitioner shows that the office erred “in a manner material to the patentability of challenged claims” when it issued or upheld the patent.
In a footnote, the decision explains that “[a]n example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims. Another example may include an error of law, such as misconstruing a claim term, where the construction impacts patentability of the challenged claims.”
Applying this framework to the facts of the case in Advanced Bionics, the PTAB determined that Advanced Bionics’ petition presents the same or substantially the same prior art previously presented to the Office during patent prosecution and that the petitioner failed to show that the examiner materially erred as to the patentability of challenged claims.
The PTAB also designated its October 31, 2019 opinion in Puma as informative. This decision denies institution of an inter partes review based on 35 USC § 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 PTAB found that the petitioner failed to show examiner error. In particular, the PTAB stated that the petitioner had failed to explain “how or why the Examiner erred.”
In Oticon—designated precedential in pertinent part—the PTAB declined to exercise its discretion under 35 USC § 325(d) after determining that the cited art was not substantially the same as the art considered during prosecution and that the examiner erred in not considering the art during prosecution. In particular, the PTAB determined “there was error in the prosecution leading to the issuance of the  patent” because the examiner failed to consider a prior art reference’s teaching.
Taken together, these three decisions demonstrate what factors the PTAB is considering when evaluating whether to use its discretion to deny institution of inter partesreview under 35 USC § 325(d).
If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the authors, Dion M. Bregman (Silicon Valley), Julie S. Goldemberg (Philadelphia), or any of the following lawyers from Morgan Lewis’s post-grant proceedings team:
Joshua M. Dalton
Andrew V. Devkar
Jason C. White
C. Erik Hawes
Rick L. Rambo
Louis W. Beardell, Jr.
Brent A. Hawkins
Andrew J. Gray IV
Michael J. Lyons
Jeffrey G. Killian, Ph.D.
Robert Smyth, Ph.D.
 Advanced Bionics LLC v. MED-EL Elektromedizinische Geräte GmbH, No. IPR2019-01469, Paper No. 6 (PTAB Feb. 13, 2020) (entire opinion designated precedential); Oticon Medical AB v. Cochlear Ltd., No. IPR2019-00975, Paper No. 15 (PTAB Oct. 16, 2019) (sections II.B and II.C designated precedential); Puma N. Am. Inc. v. Nike Inc., IPR2019-01042, Paper No. 10 (PTAB Oct. 31, 2019) (entire opinion designated informative).
 Advanced Bionics, Slip. Op. at 7 (emphasis added).
 Id. (citing Becton, Dickinson & Co. v. B. Braun Melsungen AG, No. IPR2017-01586, Paper No. 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)).
 Slip. Op. at 8.
 Id. at 8 n.9.
 Id. at 22.
 Puma, Slip. Op. at 21.
 Id. at 16.
 Oticon, Slip. Op. at 19.