PUMA North America, Inc. v. NIKE, Inc.

Informative decision only: persuasive authority, not binding precedent. When a petition asserts the same prior art and the same rejection the examiner applied during prosecution, with substantially the same rationale, and the petitioner does not show how the examiner erred, the Board may exercise its discretion under 35 U.S.C. § 325(d) ("the same or substantially the same prior art or arguments previously were presented to the Office") to deny institution after weighing the non-exclusive Becton Dickinson factors (a)-(f). New expert testimony does not change the result if it is irrelevant to the proposed modification or lacks evidentiary support. No prior precedent directly addressed this issue beyond the decision's own application of the Becton Dickinson factors, and the decision applies those factors to a petition that repeats the examiner's rejection. For the petitioner, it must do more than disagree with an allowance: it must identify specifically how the examiner erred, and an expert declaration will not carry that burden if it addresses only how to implement a modification, or if it gives conclusory "design choice" reasoning that conflicts with the prosecution history. For the patent owner, prosecution record matters: the applicant's amendment arguments and the examiner interview summary were used to show the examiner considered the distinguishing feature, which supports § 325(d) denial. The Board relied on Federal Circuit authority including Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, and Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, for the point that obviousness requires motivation to combine, not merely ability to combine. LEGAL TEST OR STANDARD: The Becton Dickinson non-exclusive 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 the prior art or arguments. TRIGGERING FACTS: The Petition's single ground (Anderton and Auger under § 103) used art identical to that of examination; the Examiner twice rejected claims 1-6 on that same combination before allowance after the applicant added 'spaced from' limitations and an interview was held. Petitioner relied on Auger for the medial midfoot bar with substantially the same rationale as the Examiner. Petitioner's alleged errors (skilled artisan could control weight; 'spaced from' limitations were design choices) were unpersuasive, and its expert declaration was new but irrelevant or unsupported. KEY QUOTE: "Moreover, Petitioner has not demonstrated persuasively that the Examiner erred in considering this prior art." (Paper 10, p. 21) PRIOR PRECEDENT AFFECTED: Applies Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17-18 (PTAB Dec. 15, 2017) (precedential in relevant part), and follows NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 13 (PTAB Sept. 12, 2018) (precedential) in treating factor (b) as unnecessary to consider, and therefore neutral, when the art is identical. PRACTICE TIP: When the petition relies on art the examiner already applied, address § 325(d) head-on in the petition: identify the specific examiner error and give fact-based evidence showing a reason to make the claimed modification, not merely the ability to make it. As patent owner, point to the examiner's rejections, the applicant's remarks, and the interview summary to show overlap.