Oticon Medical AB v. Cochlear Limited (§ II.B and II.C)

When a patent owner invokes 35 U.S.C. § 325(d) and the petition relies on new, noncumulative prior art that the Office did not consider during prosecution (here, Choi), the Board may decline to deny institution under the Becton Dickinson factors. When the petition is the petitioner's first, is timely under § 315(b), and the parallel district court action is not directly duplicative and has no trial date set, the Board may decline to exercise § 314(a) discretion, distinguishing NHK, where the same art and arguments were before an advanced district court case. The decision applies Becton Dickinson (IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential)) and distinguishes NHK Spring Co. v. Intri-Plex Technologies, Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential), showing that NHK's § 314(a) reasoning is not triggered by mere parallel litigation. Petitioners can resist discretionary denial by showing that a key reference was never before the examiner and is not cumulative of art that was, and that the Board case would not duplicate the district court case. Patent owners cannot win denial merely by showing that most of the cited art was considered in prosecution, by alleging delay or use of their district court responses as a roadmap, or by asserting that district court discovery is underway. They need evidence, such as a trial schedule, of an advanced parallel proceeding. The Board relied on Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016), for its discretion to deny under § 314(a), and described General Plastic as addressing follow-on petitions. LEGAL TEST OR STANDARD: For § 325(d), the Board weighs the non-exclusive 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. For § 314(a), the inquiry is a balanced assessment of all relevant circumstances in the case, including the merits, informed by NHK and the Trial Practice Guide Update. TRIGGERING FACTS: Section 325(d): Choi, relied on for the claimed circumferential groove, had never been considered by the Office. It was not cumulative of Härle, which the Examiner had applied, because the grooves differed in structure and purpose. The other references had been considered. Section 314(a): this was Petitioner's first petition, filed April 15, 2019, within one year of service of the April 2018 district court complaint, with no time-bar argument. Patent Owner conceded the Board case would not be directly duplicative. Patent Owner offered no evidence of stalling, no stay had been entered, and no district court trial date had been provided or set. KEY QUOTE: "There is new, noncumulative prior art asserted in the Petition, e.g., Choi." (Paper 15, p. 20) PRIOR PRECEDENT AFFECTED: Follows Becton Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential). Distinguishes NHK Spring Co. v. Intri-Plex Technologies, Inc., IPR2018-00752, slip op. at 19–20 (PTAB Sept. 12, 2018) (Paper 8) (precedential). Notes that Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–16 (PTAB Sept. 6, 2017) (precedential), addresses follow-on petitions and is not directly raised by a first petition. PRACTICE TIP: Petitioners should identify in the petition any reference the examiner never considered, explain why it is not cumulative of examined art (structure, purpose, advantage), and show that the Board case would not duplicate the district court case. Patent owners opposing institution must support timing, tactical-advantage, and stall arguments with evidence, such as a district court schedule showing a trial date, rather than assertion.