Becton, Dickinson & Co. v. B. Braun Melsungen AG

When the same or substantially the same prior art or arguments previously were presented to the Office, the Board may exercise discretion under 35 U.S.C. § 325(d) ("the Director may take into account whether . . . the same or substantially the same prior art or arguments previously were presented to the Office") to deny institution of a ground, after weighing six common non-exclusive factors: (a) similarities and material differences between asserted and examined art; (b) cumulative nature; (c) extent of evaluation during examination, including whether the art was a basis for rejection; (d) overlap between examination arguments and the petition's reliance; (e) whether the petitioner has pointed out how the Examiner erred; and (f) the extent to which additional evidence and facts warrant reconsideration. Applying them, the Board denied the Woehr/Tauschinski ground as a nominally different combination of previously considered art, but instituted on other grounds. No prior precedent directly addressed this issue in the text; the Board states it has "weighed some common non-exclusive factors" and cites Palo Alto Networks v. Finjan, IPR2015-01999, and Dorco Co. v. The Gillette Co., IPR2017-00500, as examples, and this decision lays the factors out expressly. A petitioner cannot avoid § 325(d) merely by swapping a secondary reference for a functionally equivalent one the Examiner already applied, or by recombining art the Examiner separately considered; it must identify Examiner error and offer new evidence with real technical substance. A patent owner can point to prosecution-history overlap, including arguments that overcame a rejection, and to a conclusory expert declaration to persuade the Board to deny a ground. The Board relied on Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016), for the premise that the PTO is permitted but never compelled to institute, and on 37 C.F.R. § 42.65(a) for giving little weight to expert testimony lacking underlying facts or data. LEGAL TEST OR STANDARD: Section 325(d) permits the Board to consider whether the same or substantially the same prior art or arguments previously were presented to the Office. Common 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 Woehr base reference was applied in the parent application's Woehr/Rogers rejection. Tauschinski was applied with Bialecki. The two had not been combined, but Rogers and Tauschinski valves were functionally the same with immaterial structural differences. The art was the basis for rejections, not merely listed in an IDS, against claims of similar scope (shown by a terminal disclaimer). The Petition pointed to no Examiner error and relied on an expert declaration lacking underlying facts or data. It did not explain why the applicant's prosecution arguments were wrong. KEY QUOTE: "We start with the premise that institution of inter partes review is discretionary." (Paper 8, p. 17) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cites Palo Alto Networks v. Finjan, Case IPR2015-01999, slip op. at 6-8 (PTAB Mar. 29, 2016) (Paper 7), and Dorco Co. v. The Gillette Co., Case IPR2017-00500, slip op. at 18-19 (PTAB June 21, 2017) (Paper 7), as examples of applying such factors, and follows Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). PRACTICE TIP: When a petition relies on art or a base reference applied in the challenged patent's prosecution or in a parent's, address the § 325(d) factors in the petition. Explain any material differences, show how the Examiner erred, and support new evidence with an expert declaration that gives underlying facts and addresses the applicant's prosecution arguments. Patent owners should use the factors in the preliminary response and map the prosecution history onto each one.