Becton, Dickinson & Co. v. B. Braun Melsungen AG (§ III.C.5, First Paragraph), Case IPR2017-01586, Paper 8
In Becton, the Board outlined six factors that they consider when determining whether to deny institution under AIA § 325(d) because the petition presents “the same or substantially the same prior art or arguments previously were presented to the Office.” Those factors are:
- (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.
In this proceeding, the Petitioner relied upon the same primary reference (Woehr) relied upon during prosecution of the parent of the challenged patent in combination with a different secondary reference (Tauschinski) than that combined with Woehr during prosecution of the parent (Rogers). The Patent owner argued that Rauschinski was relied upon by the Petitioner in the same manner that Rogers was relied upon by the Examiner during prosecution and therefore the Petition relied upon “substantially the same prior art or arguments previously were presented to the Office.”
In evaluating factor (a), the Board found that the check valves described by the different secondary references (Taushinski and Rogers) that were combined with the Woehr base reference in the two different proceedings functioned in the same way and that the structural differences between the devices described in the two references were not material because the Petitioner did not rely on those differences in the Petition. The Board therefore gave little weight to the fact that Tauschinski is a different secondary reference from Rogers and weighed factor (a) in favor of denial.
The Board similarly weighed factors (b)-(d) against institution because Taushinski had been evaluated by the Examiner during prosecution in combination with a different base reference and the “Petitioner relie[d] on the combination of Woehr and Tauschinski in the same manner as the Examiner relied on Bialecki and Tauschinski, and Woehr and Rogers.” The Board therefore found the references and arguments to be primarily cumulative in nature.
With respect to factor (f), the Petitioner did not identify any error by the Examiner during prosecution. Factor (f) therefore also weighed in favor of denial.
In arguing with respect to factor (e), the Petitioner asserted that new evidence was present in the IPR proceeding because the Examiner had not considered the testimony of the Petitioner’s expert. The Board did not find the expert’s testimony persuasive because it failed to “provide persuasive facts, data, or analysis to support the stated opinion” and therefore weighted this factor against institution as well.
The Board subsequently denied institution AIA § 325(d) because analysis of the factors weighed in favor of denial.
- Petitioner’s should strive to identify prior art that was not cited during prosecution of the challenged patent.
- If relying on one or more prior art references that were relied upon during prosecution, the Petitioner should combine such references with other prior art references that had not been cited during prosecution and explain why the newly cited references differ from the prior art cited during prosecution. This can be done by, for example, pointing out that a new secondary reference provides the element previously thought to be missing from the prior art references
- If relying on prior art cited during prosecution, the Petitioner should explain how the Examiner erred in evaluating the prior art during prosecution, including by identifying portions of the prior art references not addressed during prosecution that are material the question of patentability.
- Patent Owners should look for opportunities to argue for denial under AIA § 325(d) even if the cited art does not directly overlap with the art addressed during prosecution by identifying how the references relied upon in the petition are relied upon in the same manner as references cited during prosecution.