New Decisions Provide Guidance on Discretionary Denials

The Patent Trial & Appeal Board (PTAB) has been steadily rolling out new precedent since establishing it Precedential Opinion Panel (POP). Last Friday a few more decisions were added to the growing pile. The newest decisions: two precedential and one informative serve to clarify 325(d) and 314(a) considerations, while the third informative decision warns against excessive and voluminous prior art presentations.

First, there were two new precedential decisions:

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

Valve Corp. v. Elec. Scripting Prods. Inc., 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”) (explaining that the Board considers any relationship between petitioners when weighing the General Plastic factors), previously designated as precedential. 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.

As to the informative decision, this decision warns against piling up art and leaving it to the Board and Patent Owner to figure out the actual trial grounds.

Adaptics Ltd. v. Perfect Company, 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).

Scott A. McKeown is an author of the Patents Post Grant