The Patent Trial and Appeal Board (PTAB) designated an appeal decision as precedential, holding that an examiner may apply a lower standard for establishing public availability of a prior art reference as compared to a petitioner in an inter partes review (IPR). Ex parte Grillo-López, Appeal No. 2018-006082 (USPTO Jan. 31, 2020) (Chang, APJ) (denying request for rehearing) (designated as precedential on April 7, 2020). The PTAB determined that the examiner had sufficiently established a prima facie case that a US Food and Drug Administration (FDA) transcript qualified as a printed publication, even though the PTAB had previously found that a petitioner in an IPR proceeding had failed to qualify the same FDA transcript as a printed publication. The PTAB held that during prosecution, the examiner must establish only a prima facie case, and the burden then shifts to the applicant to come forward with rebuttal evidence to overcome the prima facie case. This differs from an IPR proceeding, where the petitioner must come forward with sufficient arguments to show, at the institution stage, a reasonable likelihood of prevailing on the unpatentability of the challenged claims.

In Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, Case No. IPR2019-01469 (USPTO Feb. 13, 2020) (Deshpande, APJ) (designated precedential on March 24, 2020), the PTAB set forth a framework for evaluating whether “the same or substantially the same prior art or arguments previously were presented to the [US Patent and Trademark] Office” (PTO). The two-part test is:

1. Whether the same or substantially the same (a) art or (b) arguments previously were presented to the PTO

2. If either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the PTO erred in a manner material to the patentability of challenged claims.

The PTAB’s decision reiterated its commitment to deferring to previous PTO evaluations such that if a petitioner fails to make a showing of material error, or if reasonable minds could differ about the purported treatment of the art or arguments, it cannot be said that the PTO erred. The PTAB also provided guidance for making a showing of error in the PTO’s previous consideration of similar art or arguments. If the PTO’s previous record is not well developed or is silent, then a petitioner may show that the PTO overlooked something persuasive. If the alleged error is a disagreement with a specific finding in the record, then the petitioner’s showing of material error must overcome persuasively that specific finding. Applying that standard to the petition, the PTAB found that substantially the same art and arguments had been made during prosecution, but the petitioner failed show that the examiner misapprehended or overlooked specific teachings in the relevant prior art. As a result, the PTAB found it appropriate to deny the petition under § 325(d).

In Oticon Medical AB v. Cochlear Ltd., Case No. IPR2019-00975 (USPTO Oct. 16, 2019) (Worth, APJ) (designated precedential as to §§ II.B and II.C on March 24, 2020), the PTAB set forth more detail for evaluating whether the presented art is substantially the same prior art or “new, noncumulative prior art.” Evaluating the prior art references that the patent owner alleged were “substantially the same” under § 325(d), the PTAB looked to the relevant structures disclosed in each prior art reference and the problems each structure attempted to solve. The PTAB determined that the references disclosed different structures that served different purposes. As a result, the PTAB determined that the new reference in the petition was not “substantially the same” and declined to use its discretion under § 325(d) to deny the petition. The PTAB also decline to exercise discretion under § 314(a), where the patent owner had argued that the advanced state of the parallel district court proceeding would render the IPR entirely duplicative of the district court case. The PTAB disagreed, finding that one of the references in the IPR had not been disclosed in the district court proceeding, so the IPR would not be directly duplicative of the district court action. In addition, no trial date had been set. As a result, the PTAB declined to deny institution based on § 314(a).

In PUMA North America, Inc. v. NIKE, Inc., Case No. IPR2019-01042 (USPTO Oct. 31, 2019) (Wieker, APJ) (designated informative on March 24, 2020), the PTAB denied institution, exercising its discretion under section § 325(d). The petition relied on the same combination of references that the examiner had twice used in rejecting the claims. The PTAB compared the examiner’s application of the prior art with the petitioner’s application of the prior art in the petition. It found a “high degree of overlap” because they both applied the same references to the same limitations and combined them in the same way. Having found the art and arguments similar, the PTAB turned to the two alleged “errors” in the examiner’s obviousness analysis. The first alleged error was that the examiner did not appreciate that a skilled artisan would have known how to implement the proposed modification. The PTAB rejected this as irrelevant to the obviousness analysis and not erroneous because it said nothing about why one of skill would have had a reason to make the change. Similarly, the PTAB rejected the second alleged error that  pointed to the examiner’s failure to recognize that the modification was merely a matter of aesthetic design choice. The PTAB rejected this argument because it failed to offer any “affirmative reason” why a skilled artisan would have made the change. After weighing the relevant factors, PTAB elected to exercise its discretion to deny institution under § 325(d).