The PTAB recently declined to apply Section 325(d) and instituted inter partes review after a patent owner unsuccessfully argued that the petition relied on substantially the same prior art as that which the Office had previously considered, becausethe new art shared inventorship and involved similar technology. Geotab USA, Inc. et al v. Omega Patents, LLC, IPR2023-00504, Paper No. 11 (PTAB July 25, 2023).
Geotab USA, Inc. ("Geotab") filed a petition to institute inter partes review of claims 1–22 of U.S. Patent No. 8,032,278 B2 ("the '278 patent") owned by Omega Patents, LLC ("Omega") on January 27, 2023. IPR2023-00504, Paper No. 3. The '278 patent, titled "Vehicle Tracking Unit with Downloadable Codes and Associated Methods," relates to multi-vehicle compatible tracking systems that can also remotely control various vehicle functions and/or read the status of various vehicle devices. IPR2023-00504, Paper No. 11 at 4. In its preliminary response, Omega argued that the PTAB should exercise its discretion under § 325(d) and deny institution. Id. at 12.
Section 325(d) provides that the Director may elect not to institute a proceeding if the challenge to the patent is based on matters previously presented to the Office. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential) ("Advanced Bionics"). In evaluating matters under § 325(d), the PTAB looks to the relevant non-exclusive factors set forth in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) ("Becton Dickinson"). The Beckton Dickinson factors help guide the PTAB when considering the following two-part framework for Section 325(d): (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics at 8.
Omega contended that the primary reference asserted in the Petition— U.S. Patent No. 6,957,133 ("Hunt")—was cumulative to art that was previously presented to the Office during a recent reexamination of the '278 patent. IPR2023-00504, Paper No. 11 at 14. In support, Omega argued that Hunt and the references previously considered by the office during share inventors in common and "are directed to the same common technology"—i.e., wireless appliances that can track and transmit vehicle location. Id. at 15-16.
The PTAB was not convinced that Hunt is substantially the same art as the previously cited references, and stated that they were "not persuaded that common inventorship and common technology—standing alone—satisfy the 'substantially the same art' test of the Advanced Bionics two-part framework." Id. at 16. The PTAB recognized that Advanced Bionics requires a more complete evaluation of whether Geotab had rely on Hunt in substantially the same manner that the Office relied on the related references during reexamination. Id. The PTAB concluded that Omega had failed to meet its burden because it neither explained how the examiner relied on the related references during reexamination "in the same manner" as Geotab relied on Hunt in the Petition, nor presented a "detailed analysis of the similarities" between the disclosures of Hunt and the related references sufficient to determine whether they disclosed the "same relevant information." Id. Furthermore, the PTAB found that Geotab had shown that "Hunt teaches or suggests claim limitations missing from the prior art previously considered by the Office." Id. at 17. Accordingly, the PTAB rejected Omega's argument that institution should be denied under 35 U.S.C. § 325(d).
Takeaway: When arguing for a denial of institution under Section 325(d), patent owners should take care to fully explain how a previously considered prior art reference was relied on by the Office in the same manner as the prior art now relied on in the petition.
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