PTAB / Board Discretion

Two new PTAB precedential decisions address discretionary denials for raising the same art or arguments

By Deakin T. Lauer Published March 25, 2020

Section 325(d) provides the PTAB with the discretion to deny institution if “the same or substantially the same prior art or arguments previously were presented to the Office.” To provide further clarity on this issue, the PTAB designated two decisions as precedential and one as informative.

In Advanced Bionics v. MED-EL Elektromedizinische Gerate GmbH (precedential), the PTAB established a two-part framework to determine if the art or arguments are the same.

Thus, under § 325(d), the Board uses the following two-part
framework: (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 first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.

In addition, if “reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.”

In Advanced Bionics, the same primary reference was presented and the PTAB found that the “new” secondary references were essentially the same as those previously considered. Since the petitioner failed to establish Examiner error, institution was denied.

In Puma North America Inc. v. Nike Inc. (informational), a similar decisions was reached, finding that the “Examiner previously considered the same prior art … and Petition has not demonstrated persuasively that the Examiner erred,” despite providing new declarant testimony that had not been considered by the Examiner.

In the second precedential decision, the PTAB reached a different conclusion. In Oticon Medical AB v. Cochlear Ltd. (precedential), the PTAB found that a newly-cited reference was not cumulative to a considered reference because it disclosed “different structures that serve different purposes.” As such, the PTAB granted institution to consider the new, noncumulative prior art.

Each of these cases relied on the Becton Dickinson factors, which arose out of an earlier PTAB decision designated as precedential. The two-part framework of Advanced Bionics is a simplification of the Becton Dickinson factors.