Stage of Litigation & Similarly Situated Litigants Now General Plastic Factors?

As I have mentioned on a few CLE panels as of late, the recent changes to the Patent Trial & Appeal Board’s (PTAB) Trial Practice Guide invite parties to suggest additional General Plastic factors.  These factors are applied by the Board to determine whether to exercise its discretion to deny institution under § 314(a) in applicable cases.  With the efficacy of 325(d) now muted after SAS (given it’s ground-by-ground based application), the potential “kill shot” offered by 314(a) has attracted more attention in recent Patent Owner Preliminary Responses.

With the new Trial Guide update barely a month old, the Board has already begun to expand its General Plastic factors. Two September decisions highlight the degree to which the Board may be more open to considering parallel litigation dynamics as additional factors. Continue Reading PTAB Expands Equitable Considerations to Deny AIA Trial Petitions

325(d) Compliments SNQ Standard

The popularity of AIA trial proceedings at the Patent Trial & Appeal Board (PTAB) has caused a corresponding nosedive in patent reexamination filings. Not surprisingly, when faced with a high-value patent dispute, patent challengers greatly prefer the more robust inter partes options of the PTAB as compared to ex parte reexamination. But, that is not to say that patent reexamination is no longer important. Indeed, there are situations where patent reexaminations are conducted in parallel to AIA trials, or at the conclusion of such a trial.

A question that has lingered in recent years is the relationship of the Substantial New Question (SNQ) standard of patent reexamination to the AIA’s “same or substantially the same prior art or arguments” of 35 U.S.C. § 325(d). The statute makes clear that it applies to Chapter 30 statutes (reexamination), and includes the language “petition or request” to further clarify that patent reexamination is covered. But, there has been little guidance from the agency on the use of 325(d) analysis in patent reexamination, or how it might operate together with the seemingly redundant SNQ standard.

A recent decision of the Office of Patent Legal Administration (OPLA) provides a very comprehensive discussion of the various moving parts (here).  (Given my firm’s involvement, I am limiting my commentary to a simple introduction of the issues discussed).

Additional Informative Decisions 325(d)

Today the Patent Trial & Appeal Board (PTAB) added to its growing stockpile of cases that address the meaning of “same or substantially the same prior art or arguments” under 35 U.S.C. § 325(d). This growing body of decisions is welcome news for Patent Owners as it emphasizes the scrutiny given to AIA trial petitions that attempt to revisit prior art and arguments of a previous proceeding.

The PTAB has designated the following decisions informative.

Kayak Software Corp. v. International Business Machines Corp., Case CBM2016-00075 (PTAB Dec. 15, 2016) (Paper 16). In this decision, the Board exercised its discretion under 35 U.S.C. § 325(d) and declined to institute review of the claims under obviousness grounds because the record indicated that the cited prior art was previously presented to and extensively considered by the Office during prosecution. The Board further was not persuaded that the incremental addition of an already considered reference was sufficient to avoid § 325(d), but explained that the presence of certain factors, including a limited prosecution history, clear errors in the prosecution, and/or the cursory consideration of the prior art may weigh against the exercise of discretion to deny institution under § 325(d).

Becton, Dickinson & Company v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8). In this decision, the Board weighed a non-exclusive list of factors and concluded to exercise its discretion under 35 U.S.C. § 325(d) and declined to institute review of the claims under certain obviousness grounds. The non-exclusive factors the Board considered were: (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, including whether the prior art was the basis of rejection; (4) 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; (5) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (6) the extent to which additional evidence and facts presented in the Petition warranted reconsidered of the prior art or arguments.

Previous 325(d) decisions designated as informative:

Unified Patents, Inc. v. Berman, Case IPR2016-01571, Case IPR2016-01571 (PTAB Dec. 14, 2016) (Paper 10)
Hospira, Inc. v. Genentech, Inc., Case IPR2017-00739 (PTAB July 27, 2017) (Paper 16)
Hospira, Inc. v. Genentech, Inc., Case IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7)