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PTAB
has designated the following decisions, which involve 35 U.S.C. § 325(d),
as 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.
A copy of these informative decisions can be found on the PTAB’s Precedential and
Informative Decisions page of the USPTO website.
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