Sins of the Fathers? Grandparent IPR Factors into Current Institution Decision | McDermott Will & Emery
US Patent & Trademark Office (PTO) Director Kathi Vidal vacated and remanded a Patent Trial & Appeal Board decision denying institution of an inter partes review (IPR) because the Board improperly applied the precedential Advanced Bionics framework in rendering its decision. Keysight Tech., Inc. v. Centripetal Networks, Inc., IPR2022-01421 (PTAB Decision Review Aug. 24, 2023) (Vidal, Dir.)
Keysight Tech. petitioned for an IPR proceeding against a patent owned by Centripetal Networks, challenging the validity of all claims. After the Board denied institution, Director Vidal issued a sua sponte director review decision, vacating and remanding the Board’s decision.
The Centripetal patent is the great-grandchild of, and shares the same disclosure as, an earlier Centripetal patent that was subject to an IPR proceeding during the pendency of the presently challenged patent. The Final Written Decision (FWD) in the earlier IPR found all claims of the patent unpatentable. The patent owner included that FWD in an Information Disclosure Statement (IDS) submitted during the prosecution of the presently challenged patent, and the examiner initialed it as having been considered.
In its decision denying institution, the Board cited the guidance of Advanced Bionics, which articulates a framework that requires that the Board determine the following:
- Whether the same or substantially the same prior art or arguments made in the petition were previously presented to the PTO during prosecution of the challenged patent
- Whether the PTO erred in a manner material to the patentability of the challenged claims when it allowed the claims of the patent.
If both factors are met in the affirmative, the Board should not exercise its discretion to deny institution.
Here, the Board found that the first factor of the Advanced Bionics framework was met because the petitioner’s arguments in its petition were the same or substantially the same as those in the FWD in the IPR of the grandparent patent. However, the Board found that the second part of the framework was not satisfied and therefore denied institution.
Although Director Vidal agreed with the Board’s findings under the first factor, she vacated the Board’s findings pursuant to the second factor after determining that this factor was also met. Director Vidal found that the PTO erred in a manner material to the patentability of the challenged claims for the following reasons:
- The challenged patent and the grandparent were directed to the same subject matter.
- The prior art references submitted to the PTO during the prosecution of the challenged patent were the same as those asserted in earlier IPR and were considered by the examiner through the patent owner’s IDS.
- In the grandparent IPR, the Board held all of the claims of the patent unpatentable due to these same prior art references.
- The examiner’s statement of reasons for allowing the challenged patent was that the claims were directed to limitations that appeared in both the currently challenged claims and the claims found unpatentable in the grandparent patent.
As the director noted, the overlap between the claim limitations in the two patents suggested that the PTO erred by overlooking and/or misapprehending the significance of the FWD issued by the Board in the grandparent IPR as it pertained to the patentability of the presently challenged claims.
Finding that the examiner erred in a manner material to the patentability of the challenged claims, Director Vidal concluded that the second part of the Advanced Bionics framework was also satisfied, and the Board improperly exercised its discretion to deny institution.
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