By Mike Lavine, Aska Fujimori-Smith,* Jetta Cook, and Matt Johnson -
The Patent Trial and Appeal Board ("PTAB" or "Board") recently denied inter partes review (IPR) of an electrocardiography monitor patent under 35 U.S.C. §325(d), finding that the same or substantially the same prior art or arguments were previously presented to the Board and Petitioner failed to "show error in the consideration of that art or argument." Vital Connect Inc. v. Bardy Diagnostics Inc. IPR2023-00381, Paper 7 at 2 (July 11, 2023).
Drawing from precedent in Advanced Bionics, the Board used a two-part framework in its analysis under §325(d). Id. In part one, the Board considered whether the same or substantially the same art or arguments were previously presented to the USPTO (the "Office"). Id. at 13 (citing Advanced Bionics LLC v. Med-El Elektromedizinische Geräte GmbH IPR2019-01469, Paper 6 (Feb. 13, 2020)). In part two, the Board considered "whether the petitioner . . . demonstrated that the Office erred in a manner material to the patentability of challenged claims." Id. The PTAB emphasized the importance of step two ("material error") in ensuring the distinction between §325(d) and §314, which sets out the requirements for IPR institution.
In part one of the §325(d) analysis, the Board found that Petitioner's three prior art references - Oster, Yang, and Mazar - were previously presented to the USPTO. Id. at 14. "Previously presented art" can include "art made of record by the Examiner." Id. Since Oster was considered by the Examiner in an information disclosure statement (IDS), Oster qualified as "same art" considered by the Office. Id. Although Yang was never directly examined by the Office, Yang's parent patent was disclosed on an IDS and considered by the Examiner. Id. at 15-16. The Board concluded "Yang is cumulative of Yang Parent and, therefore, 'substantially the same art' that was previously presented to the Office." Id. at 16. The Board also determined that another patent previously listed on an IDS and considered by the Examiner had "the same or substantially the same disclosures as Mazar" and therefore qualified as "'substantially the same art' that was previously presented to the Office." Id. at 17. The Board therefore found that all three prior art references satisfied the first part of the §325(d) framework. Id. at 18.
In part two, the Board concluded that Petitioner failed to demonstrate material error because it "did not allege an error and/or substantively address §325(d) in its Petition." Id. at 18-19. In reaching this conclusion, the Board emphasized that statements presenting grounds of unpatentability, with nothing more, do not meet the requirement of showing material error by the Office, and consequently do not warrant an IPR. Id. at 19-20.
Takeaway: Petitioners should avoid using prior art that is substantially similar to, or cumulative of, prior art previously considered by the Office. Alternatively, Petitioners should specifically allege and demonstrate material error in the Board's previous consideration of such prior art, to maximize their chances of IPR institution.
* Aska was a Summer Associate in Jones Day's Silicon Valley Office;
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