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December 18, 2020

Oticon Medical AB et al. v. Cochlear Limited, Case IPR2019-00975, Paper 15

The Board found that the Petitioner had demonstrated a reasonable likelihood that all challenged claims were unpatentable. Notwithstanding the merits of Petitioner’s invalidity challenges, the Patent Owner argued for discretionary denial of the petition under on both § 325(d) and § 314(a).

With respect to § 325(d), Patent Owner argued that the asserted prior art was based on substantially the same prior art and arguments already considered during prosecution of the patent and its parent application. (Paper 15 at 9.) The Board evaluated these assertions by weighing six, non-exclusive factors previously identified in Becton Dickinson¹ (the “Becton Dickinson factors”):

  • (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.

Paper 15 at 10 (citing Becton Dickinson at 17-18).

Considering factors (a) and (b) together, the Board disagreed with the Patent Owner that combinations including art considered during prosecution of the patent and parent patent were substantially the same. Every proposed combination included the Choi reference, which had never been considered by the Examiner and was not cumulative of the record. Here, the “circumferential groove” described by Choi was structurally different and served different purposes than the “circumferential groove” considered during prosecution, solved a problem that was closer to the patent, and provided an advantage that Petitioner used to argue motivation to combine. (Paper 15, at 10-15.)

Considering factors (c) and (d) together, the Board reiterated its rationale that even if certain of the asserted art were previously considered, the Choi reference had not been considered and was not cumulative. (Id. at 18-19.)

Considering factors (e) and (f) together, the Board concluded that the Examiner erred in not considering the Choi reference and reasoned that a person of ordinary skill in the art would have considered Choi’s teachings (relating to a jaw bone) when facing the problem of implanting a fixture in a skull bone, as described by the patent. (Id. at 19-20.)

Because of at least Choi, which the Board described as “new, noncumulative art,” the Board determined not to exercise its discretion under § 325(d) to deny institution. (Id. at 20.)

With respect to § 314(a), the Patent Owner argued that the Petitioner waited a year to file the petition, used the Patent Owner’s arguments in district court as a roadmap for the petition, sought to stall district court proceedings with the petition, and that the district court was likely to make validity determinations in a similar timeframe. (Id. at 20.)

The Board found that Petitioner timely filed the petition. The Board acknowledged Petitioner may have derived some benefit from seeing the Patent Owner’s validity positions in district court before filing the petition, but also took that as an acknowledgement by the Patent Owner that the petition was not directly duplicative of the district court’s validity considerations. The Board deemed Patent Owner’s argument that Petitioner sought to stall the district court action as speculative, as the Patent Owner did not provide any evidence nor inform the Board of any stay in district court. The Board also dismissed Patent Owner’s argument that trial was likely to overlap with the Board’s proceedings because the Patent Owner did not provide any district court schedule demonstrating a trial date. (Id. at 22-24.)

The Board declined to exercise its discretion under § 314(a) to deny the petition.

Takeaways

  1. Relying on new, noncumulative art in § 103 combinations may be sufficient to overcome discretionary denial under § 325(d), even if that art is combined with previously presented art.
  2. Even if a Petitioner strategically uses arguments that a Patent Owner makes in district court to make new invalidity arguments in a petition, the non-duplicative nature of those arguments vis-à-vis arguments considered by a district court weighs in favor of avoiding discretionary denial under § 314(a).
  3. Arguments concerning inefficiencies in parallel proceedings (e.g., alleged stalling of due dates or likelihood of a trial in district court) should be supported with actual proof (e.g., court schedule or stay motions) to avoid being dismissed as speculative by the Board.

¹ Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential) (“Becton Dickinson”).

Author

Jacqueline Tio | Principal | Atlanta, GA

Jacqueline Tio’s practice emphasizes intellectual property litigation matters, including patent and trade secrets litigation in venues across the country and covering a wide range of technologies. Her experience includes both active litigations... Read More