Director Vidal Vacates And Remands Decisions Denying Institution Under 325(d)

Holdings

In Keysight Technologies, Inc. v. Centripetal Networks, Inc.,¹ and Wolfspeed, Inc. v. The Trustees of Purdue University,² the Director vacated the Board's decision to deny institution for inter partes review and remanded for further proceedings.

Legal Standard

Under 35 U.S.C. § 325(d), the USPTO Director may deny a petition for inter partes review if the same or substantially the same prior art or arguments previously were presented to the Office. While the Director has granted the Board authority to deny institution under § 325(d), the Director reserves the right to review such decisions. In its precedential Advanced Bionics decision, the Board determined that discretionary denial under § 325(d) should be evaluated under a "two-part framework."³ Advanced Bionics, part 1 asks whether "the same or substantially the same prior art or arguments previously were presented to the Office." If yes, part 2 asks whether petitioner "has demonstrated that the Office erred in a manner material to the patentability of the challenged claims." The Board may deny institution if petitioner fails both steps, and will evaluate the petition on the merits if discretionary denial is not warranted.

Keysight Technologies, Inc. v. Centripetal Networks, Inc.

In Keysight Technologies, Inc. v. Centripetal Networks, Inc., the Director vacated the Board's decision denying institutionof U.S. Patent No. 10,681,009, ("the '009 patent"), under 35 U.S.C. § 325(d). The Director determined that Petitioner satisfied both requirements of the Advanced Bionics framework, and remanded to the Board to determine whether "there is a reasonable likelihood that the petitioner would prevail."

The '009 patent arose from a series of continuation applications tracing back to U.S. Patent No. 9,674,148 ("the '148 patent"). On March 5, 2020, the Board issued a Final Written Decision ("FWD") finding all claims of the '148 patent unpatentable. Patent Owner, Centripetal Networks, filed an Information Disclosure Statement (IDS) during prosecution of the '009 patent that included the FWD. On April 29, 2020, the Examiner issued a Corrected Notice of Allowability for the '009 patent and specified that "the prior art fails to teach the combination of elements as put forth in the claims."

In its decision denying institution of inter partes review of the '009 patent, the Board found that "Petitioner's arguments in the Petition were the same or substantially the same as those found in the '148 FWD." Turning to Advanced Bionics, part 2, the Board determined that Petitioner's argument that the examiner had not "considered the art and arguments during the prosecution" was insufficient to "demonstrate that the Office erred in a manner material to the patentability of the challenged claims." Petitioner requested rehearing and review by the Precedential Opinion Panel (POP), and while the request was pending, the Director issued an order granting sua sponte review and dismissed the other requests.

On review, the Director agreed that Petitioner failed Advanced Bionics, part one, but disagreed with the Board's finding under part two.

Specifically, the Director agreed with Petitioner that there was "substantial overlap" between the '148 patent claims and '009 claims, and determined that Petitioner's reliance on the "the same prior art references ... in this proceeding" which were used to determine "that the challenged claims of the '148 patent were unpatentable" "establish[ed] that the Office erred in a manner material to patentability under the particular circumstances of this case." The Director was unpersuaded by Patent Owner's argument that the Examiner considered the FWD and its references, and that the Examiner's statements in its Corrected Notice of Allowance indicated as much. Specifically, the Director found that the Examiner's statement was directed to limitations found in both the '148 and '009 patents, and that the Examiner's statement "suggests the Office erred by overlooking the significance of the '148 FWD as it pertains to the patentability of the claims of the '009 patent." Accordingly, the Director vacated and remanded the Board's decision for consideration on the merits.

Wolfspeed, Inc. v. The Trustees of Purdue University

In Wolfspeed, the Board initially denied inter partes review of U.S. Patent No. 7,498,633 B2 ("the '633 patent") under 35 U.S.C. § 325(d) because Petitioner "raise[d] substantially the same prior art previously presented to the Board" in an earlier IPR, IPR2022-00252 ("IPR252"), and did "not establish reversible error in the decision entered in that prior proceeding." Petitioner requested POP review, and the Director issued an order granting sua sponte review and dismissing the other request. On review, the Director vacated and remanded the Board's decision upon finding that the prior art was not substantially the same as the art presented in IPR252.

On remand, the Board reassessed its analysis under § 325(d), particularly whether "the same or substantially the same arguments previously were presented to the Office in IPR252." The Board determined that certain prior art references were materially different from those cited in IPR252 and that the arguments were likewise materially different.

The Board then turned to the question of whether the petitioner had demonstrated that "there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." The Board first agreed with Patent Owner that "that the Petition does not set forth a ground ... with the clarity or particularity required to support institution of review." The Board also determined that "Petitioner is not likely to prevail at trial with respect to at least one challenged claim" because the arguments rely on a "facially incorrect factual proposition." The Board ultimately denied institution on grounds that the "[p]etition does not articulate 'reasoning with some rational underpinning to support the legal conclusion of obviousness.'"

Takeaways

These decisions suggest that the Director is monitoring the Board's application of §325(d) and signify a willingness by the Director to intervene and reverse the Boards findings under Advanced Bionics. Practitioners can use the Director's analysis as a framework for guiding the Board's consideration of previously presented prior art, particularly to demonstrate examiner error and to highlight the distinctions (or lack thereof) between previously presented art and the art in the petition.

Footnotes

1. IPR2022-01421, Paper 14 (PTAB Aug. 24, 2023)

2. IPR2022-00761, Paper 19 (PTAB July 20, 2023)

3. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential).

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