Patent Case Summaries April 1, 2020

Patent Case Summaries | Week Ending March 27, 2020

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.


Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, No. IPR2019-01469 (Feb. 13, 2020) (designated precedential on Mar. 24, 2020). Opinion by Deshpande, joined by Fink and Horner.

The Patent Trial and Appeal Board exercised its discretion to deny institution of an IPR under 35 U.S.C. § 325(d).

Section 325(d) gives the Board discretion to deny institution when “the same or substantially the same prior art or arguments previously were presented to the Office.” The Board set forth the following two-part framework for determining whether to exercise its discretion under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims.” The Board noted that “a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims,” and that “[a]nother example may include an error of law, such as misconstruing a claim term, where the construction impacts patentability of the challenged claims.”

The Board explained that the two-part framework “reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” The Board acknowledged, however, that the framework “does not address challenging factual questions, such as when a ground of unpatentability presents ‘substantially the same prior art or arguments’ previously presented to the Office.” In those situations, the Board held that “the Becton, Dickinson factors provide useful insight into how to apply the framework.”

Applying the framework, the Board found that the IPR Petition presented “the same or substantially the same prior art that was previously presented to the Office” and that Petitioner “has not demonstrated that the Examiner erred when considering the prior art or arguments.” Thus, the Board exercised its discretion to deny institution under § 325(d).

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Oticon Medical AB, et al. v. Cochlear Ltd., No. IPR2019-00975 (Oct. 16, 2019) (designated precedential on Mar. 24, 2020). Opinion by Worth, joined by Grossman and Woods.

The Patent Trial and Appeal Board instituted an IPR, declining to exercise its discretion under either 35 U.S.C. § 325(d) or 35 U.S.C. § 314(a) to deny institution.

First, Patent Owner argued that the Board should deny institution under § 325(d) because, according to Patent Owner, the Petition was based on substantially the same prior art and arguments already considered by the Office during prosecution of the patent at issue or its parent application. Addressing Patent Owner’s contentions “in view of the factors announced in Becton, Dickinson,” the Board concluded that “[t]here is new, noncumulative prior art asserted in the Petition.” Therefore, the Board “determine[d] not to exercise [its] discretion under § 325(d) to deny the Petition on this basis.”

Second, Patent Owner argued that the Board should deny institution under § 314(a) because, according to Patent Owner, “Petitioner waited a year to file the Petition and used Cochlear’s responses in District Court as a roadmap for the Petition” and because “the District Court will likely determine the validity of the challenged claims in a similar timeframe.” The Board explained that the § 314(a) inquiry is “a balanced assessment of all relevant circumstances in the case, including the merits.” As part of its analysis, the Board distinguished its precedential decision in NHK Spring Co. v. Intri-Plex Technologies, where the Board had denied institution under § 325(d) and had found that “the advanced state of the district court proceeding is an additional factor that weighs in favor of denying the Petition under § 314(a).” After recounting and weighing the procedural history at issue here, the Board declined to exercise its discretion to deny institution under § 314(a), noting that “a trial in this proceeding would not be directly duplicative of the District Court action.”

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PUMA North America, Inc. v. NIKE, Inc., No. IPR2019-01042 (Oct. 31, 2019) (designated informative on Mar. 24, 2020). Opinion by Wieker, joined by Weatherly and Belisle.

The Patent Trial and Appeal Board exercised its discretion under 35 U.S.C. § 325(d) to deny institution of an IPR.

Under § 325(d), the Board has discretion to deny institution when “the same or substantially the same prior art or arguments previously were presented to the Office.” Here, the Petition cited the same art that had been cited during the original prosecution of the challenged patent. The Petitioner contended, however, that the Petition “provides new evidence and argument” relating to that art.

The Board held: “Upon review of the relevant prosecution history and the parties’ arguments, we find that the Becton Dickinson factors, when considered as a whole, weigh in favor of exercising our discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.” The Board summarized its finding by stating that the Examiner had considered the same prior art and had twice rejected the challenged claims in the same manner proposed by Petitioner. Moreover, the Board concluded that “Petitioner has not demonstrated persuasively that the Examiner erred in considering this prior art.” Thus, the Board denied institution under § 325(d).

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