Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH

When a petition relies on the same or substantially the same prior art or arguments previously presented to the Office in a proceeding pertaining to the challenged patent, the Board applies a two-part § 325(d) framework: (1) whether the same or substantially the same art or arguments previously were presented to the Office; and (2) if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. If either condition of part one is met and the petitioner fails to show material error, the Director generally will exercise discretion not to institute; the Becton, Dickinson factors (a), (b), and (d) inform part one and factors (c), (e), and (f) inform part two, and are read broadly to apply to any proceeding before the Office. The decision clarifies Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). It turns the Board's practice of requiring a showing of Office error into an express two-part framework, and it reads the Becton, Dickinson factors broadly beyond initial examination. For petitioners, adding references that were never of record will not avoid § 325(d) if they are substantially the same as art the Examiner already evaluated, and the petitioner must then show material error, such as overlooked or misapprehended teachings or an error of law like misconstruing a claim term. For patent owners, the decision gives a structured basis to argue in a preliminary response that new references are cumulative of art that was considered and distinguished, and that the Office should be deferred to unless material error is shown. The decision cites no Federal Circuit, CCPA or Supreme Court authority for this analysis; it rests on 35 U.S.C. § 325(d) and the Board's prior decisions. LEGAL TEST OR STANDARD: 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. 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; (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. Factors (a), (b), and (d) address part one; factors (c), (e), and (f) address material error in part two. TRIGGERING FACTS: Zimmerling was undisputedly evaluated and applied in rejections during prosecution of the '909 patent. Petitioner relied heavily on Zimmerling in both grounds, and Charvin, Chang, and Schmid were not of record. Petitioner used those references only for limitations the Examiner had already found in Zimmerling, in the same manner, and did not rely on them to show a magnet that rotates. The claims were allowed after amendment over Zimmerling. Petitioner did not argue that Charvin or Schmid cured Zimmerling's deficiency as to the amended limitation, so it showed no material error. KEY QUOTE: "At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown." (Paper 6, p. 9) PRIOR PRECEDENT AFFECTED: Follows and clarifies Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) ("Becton, Dickinson"), whose factors the Board says should be read broadly to apply to any proceeding pertaining to the challenged patent, including prior AIA proceedings, not only initial examination. PRACTICE TIP: If any asserted reference is the same as or substantially the same as art or arguments already before the Office, address § 325(d) directly in the petition. Show how the new art differs materially from what the Examiner considered, and identify the specific material error, such as an overlooked or misapprehended teaching or a legal error like a claim misconstruction. Do not rely on a reference's absence from the record alone.