Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01587 (Dec. 15, 2017) (Paper 8)

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Takeaway(Informative): The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously considered by the Office (such as in the context of the original prosecution of the patent at issue).


Petitioner Becton, Dickinson and Company (“Becton”) filed a petition challenging claims 18, 22, and 25 of U.S. Patent No. 8,328,762 B2 (“the ‘762 patent”) as obvious based on a combination of the Woehr and Tauschinski prior art references. The petition also challenged the claims on additional grounds.

The Board instituted IPR on some grounds, but declined to institute IPR based on the Woehr and Tauschinski combination because the Patent Office had already considered Woehr and Tauschinski during the original prosecution of the ‘762 patent and the Board concluded that the same or substantially the same arguments that Becton raised in connection with Woehr and Tauschinski in its petition were previously presented to, and considered by, the Office during the original prosecution.

The Board stated that “[i]n evaluating whether to exercise our discretion when the same or substantially the same prior art or arguments previously were presented to the Office under section 325(d), we have weighed some common non-exclusive factors, such as: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.”

The Board noted that although Woehr and Tauschinski were never considered in combination during the original prosecution, the Examiner considered Woehr as a base reference in combination with Rogers, which discloses the same claim element as Tauschinski. The Board found that Tauschinski and Rogers operate the same way. The Board found that the structural differences between Tauschinski and Rogers are not material because the structural differences do not appear to affect the relevant functionality in any a meaningful manner and noted that Petitioner did not rely on, or substantively address, any particular differences between the Rogers and Tauschinski valve structure as a basis for its unpatentability argument.

The Board found that both Woehr and Tauschinski were substantively considered, albeit in separate obviousness rejections, during prosecution of the parent application from which the ‘762 patent issued as a continuation. The Board noted that “[t]his is not a case where the prior art was simply listed in an IDS during prosecution.”

The Board noted that Becton had not persuasively explained why the “new combination” leads to any different argument or reasoning than the positions advanced by the Examiner.

The Board concluded that new expert testimony that was not previously considered by the Patent Office did not warrant reconsideration of Woehr and Tauschinski in part because the expert testimony presents little persuasive technical evidence or explanation as to why one of ordinary skill in the art would have combined Tauschinski’s valve with Woehr’s catheter hub and spring needle protective device.

The Board justified its conclusion as follows: “[w]ith only a nominally different combination of prior art and considering that Petitioner presents the same arguments as were meritoriously overcome by the Applicant during prosecution, based on our evaluation of the non-exclusive factors above, we are persuaded that exercising our discretion under 325(d) on this particular ground is appropriate.”