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The USPTO Recently Issued Two Precedential and One Informative Decision Regarding Discretionary Denial

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Sterne, Kessler, Goldstein & Fox

The USPTO explained the significance of the cases as follows:
 
Becton, Dickinson and Company v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8) – (precedential as to section III.C.5, first paragraph (pages 17–18)).

This decision discusses non-exclusive factors considered by the Board under 35 U.S.C. § 325(d) when determining whether to institute an inter partes review. The Office previously designated Becton Dickinson as informative and now further designates a portion of that decision as precedential, consistent with guidance set forth in the July 2019 Update to the Trial Practice Guide, which included the Becton Dickinson factors. The portion of the decision that is precedential identifies six non-exclusive factors that the Board considers in evaluating whether to exercise discretion under § 325(d), when a petition includes the same or substantially the same prior art or arguments that previously were presented to the Office.

  1. The similarities and material differences between the asserted art and the prior art involved during examination;
  2. The cumulative nature of the asserted art and the prior art evaluated during examination;
  3. The extent to which the asserted art was evaluated during examination;
  4. The extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art;
  5. Whether a petitioner has pointed out sufficiently how the office erred in evaluating the asserted prior art; and
  6. The extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments.

Valve Corporation v. Electronic Scripting Products, Inc., Case IPR2019-00064,-00065, -00085 (PTAB May 1, 2019) (Paper 10) (“Valve II”) (precedential)
 
This decision concerns the denial of institution of an inter partes review based on 35 U.S.C. § 314(a), after applying the General Plastic factors. This decision provides further guidance following Valve Corp. v. Elec. Scripting Prods., Inc., Case IPR2019-00062, -00063, -00084 (PTAB Apr. 2, 2019) (Paper 11) (“Valve I”), previously designated as precedential, explaining that the Board considers any relationship between petitioners when weighing the General Plastic factors.  Particularly, the decision states that the first General Plastic factor (“whether the same petitioner previously filed a petition directed to the same claims of the same patent”) applies to the petitioner because the petitioner joined a previously instituted inter partes review proceeding and, therefore, is considered to have previously filed a petition directed to the same claims of the same patent. The decision further explains that the Board’s application of the General Plastic factors is not limited to instances in which a single petitioner has filed multiple petitions.
 
Adaptics Limited v. Perfect Company, Case IPR2018-01596 (PTAB Mar. 6, 2019) (Paper 20) (informative)
 
This decision concerns the denial of institution of an inter partes review, based on 35 U.S.C. § 312(a)(3), after determining that the petition lacks particularity in identifying the asserted challenges and that the lack of particularity results in voluminous and excessive grounds. The decision also determines that, in the interests of the efficient administration of the Office and the integrity of the patent system, and as a matter of procedural fairness to the patent owner, the petition should be denied under 35 U.S.C. § 314(a).


This article appeared in the August 2019 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.