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09 November 2020
On 24 March 2020 the Precedential Opinion Panel of the Patent Trial and Appeal Board (PTAB) designated as precedential an opinion which sets out a two-part inquiry for determining when the PTAB can deny institution of inter partes review proceedings under 35 US Code (USC) 325(d) as duplicative of art and arguments previously presented in patent prosecution (Advanced Bionics, LLC v MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 13 February 2020).
35 USC 325(d) states that in determining whether to institute an inter partes review:
the [PTAB] Director may take into account whether, and reject the [inter partes review] petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.
The director's determination to institute or deny an inter partes review is non-appealable (35 USC 314(a).
In Advanced Bionics, LLC the PTAB established a two-part framework for determining whether Section 325(d) applies:
(1) whether the same or substantially the same art previously was presented to the [Patent] 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 [inter partes review] petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.
According to Advanced Bionics:
[i]f a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review. If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.
Advanced Bionics further explained as follows:
For example, if the record of the USPTO's previous consideration of the art is not well developed or silent, a petitioner may show that the USPTO erred by overlooking something persuasive under Factors E and F.
For further information on this topic please contact Christopher Loh at Venable LLP by telephone (+1 410 244 7400) or email (firstname.lastname@example.org). The Venable LLP website can be accessed at www.venable.com.
although Becton, Dickinson factors (a) and (b) pertain to art evaluated 'during examination,' these factors more broadly provide guidance as to whether the art presented in the petition is the 'same or substantially the same' as the prior art previously presented to the Office during any proceeding, including prior AIA proceedings.
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