From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Rich Giunta
`Precedential_Opinion_Panel_Request
`hzhong@irell.com; aproctor@irell.com; sobrien@hilgersgraben.com; jsheasby@irell.com; ValtrusIPR@irell.com;
`RGiunta-PTAB@WolfGreenfield.com; BHackman-PTAB@WolfGreenfield.com
`Request for POP review: IPR2022-01197
`Thursday, February 2, 2023 4:45:55 PM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Honorable Precedential Opinion Panel,
`
`Petitioner Google LLC respectfully requests review by the Precedential Opinion Panel (“POP”) of the
`Decision Denying Institution of Inter Partes Review in IPR2022-01197, Paper 9 (“Decision”).
`Concurrent with this request for POP review, Petitioner has timely filed a Request for Rehearing
`under 37 C.F.R. § 42.71(d), in accordance with SOP 2. While the Request for Rehearing seeks
`rehearing on two distinct bases (one addressing Grounds 1-5 and another addressing Grounds 6-8),
`Petitioner’s POP request is limited to one of those bases and directed to Section III.E of the Decision
`at pages 23-26 relating to the Board’s discretionary denial of institution pursuant to 35 U.S.C. §
`325(d).
`
`The Board discretionarily denied institution under § 325(d) based on a foreign counterpart of a
`reference used in Grounds 6-8, where the foreign counterpart was initialed on an IDS but never
`applied in a rejection or otherwise discussed by the Examiner or the applicant during prosecution of
`challenged U.S. Patent No. 6,816,809 (the “’809 Patent”). The Board found that the Petition lacked a
`showing of how the Office erred in its evaluation of the art. In so finding, the Board ignored the
`Petition’s grounds demonstrating that the reference renders the claims unpatentable. POP review is
`warranted because by failing to consider the Petition’s showing that the reference renders the
`claims unpatentable, the Board panel abused its discretion and acted inconsistently with how other
`panels have addressed similar facts.
`
`Based on my professional judgment, I believe this case requires an answer to a precedent-setting
`question of exceptional importance: Whether it is an abuse of the Board’s discretion under § 325(d)
`to deny institution of a ground based on a reference submitted in an IDS and initialed by the
`Examiner, but otherwise not discussed during prosecution, without considering whether the ground
`demonstrates that the Office materially erred in granting the challenged claims over the reference?
`
`Background
`
`The Petition alleged in Grounds 6-8 that claims 1-2, 4, 6-17 of the ’809 Patent were unpatentable as
`obvious over U.S. Patent No. 4,924,428 (“Vea”). Petition, 41-68. The Board never addressed the
`merits of Grounds 6-8 in exercising its discretion under 35 U.S.C. § 325(d) to deny those grounds.
`Decision, 23.
`
`The Board applied the two-part framework laid out in Advanced Bionics, LLC v. Med-El
`IPR2022-01197
`Ex. 3002
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`

`

`Electromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential)
`(“Advanced Bionics”) that requires evaluation of (1) whether the same or substantially the same art
`or arguments previously were presented to the Office, and, if so (2) whether the petitioner has
`demonstrated that the Office erred in a manner material to the patentability of the challenged
`claims.
`
`The Board found the first part of the Advanced Bionics framework satisfied because Vea’s European
`counterpart was listed on an IDS and initialed by the Examiner. Decision, 22. The Board noted that
`the IDS erroneously referred to the “Applicant” as “Vee” rather than “Vea,” but found this error
`“harmless” because other information on the IDS (e.g., the EP patent number) was “sufficient to
`correctly identify this document as the European counterpart to that relied on in this proceeding.”
`Decision, 22 n.13.
`
`With respect to the second part of the Advanced Bionics framework, the Board noted that useful
`insight was provided by factors (c), (e) and (f) of the Board’s decision in Becton, Dickinson & Co. v. B.
`Braun Melsungen AG, IPR2017-01586, Paper 8 (Dec. 15, 2017) (precedential as to Section III.C.5, first
`paragraph) (“BD”). Decision, 21-22. Those BD factors state:
`
`(c) the extent to which the asserted art was evaluated during examination, including
`whether the prior art was the basis for rejection;
`(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 denied institution based on factor (e), alleging that “[b]ecause Petitioner fails to
`demonstrate material error by the Office” in considering Vea’s European counterpart, “we exercise
`our discretion under § 325(d) to deny institution” of Vea-based Grounds 6-8. Decision, 23 (emphasis
`added). In finding that the Petition failed to demonstrate error in allowing the claims over Vea’s
`European counterpart, the Board ignored the merits of the Petition’s grounds demonstrating that
`Vea renders the claims unpatentable.
`
`The Board faulted the Petition for not “address[ing] the Office’s consideration of this reference with
`any degree of specificity.” Decision, 23 (emphasis added). But the “extent” of the Office’s
`“evaluat[ion]” of Vea’s European counterpart (Decision, 21 citing BD factor (c)) was that the
`Examiner initialed an IDS; other than initialing the IDS, the Examiner said nothing about Vea’s
`counterpart. The Board did not explain how the Petition could have addressed with “specificity”
`“the Office’s consideration of this reference” when the file history is entirely silent with respect to
`how the Examiner viewed the reference and why the Examiner allowed the claims over it. Indeed,
`given that the reference was never substantively discussed during prosecution, the only way
`Petitioner could have demonstrated “how the Examiner erred in its evaluation of the asserted prior
`art” (Decision, 21 citing BD factor (e)) was by demonstrating that Vea renders the challenged claims
`unpatentable. Ground 6 did precisely that, but the Board never considered it. The Board’s assertion
`that “Petitioner fails to demonstrate material error” (Decision, 23) misapprehended that Ground 6
`made the showing the Board alleged was absent. In short, the Petition made the relevant showing,
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`but the Board simply and improperly ignored it.
`
`As the Board noted, Petitioner requested authorization to file a preliminary reply to, inter alia,
`identify cases where the Board has declined to exercise discretion under § 325(d) where a reference
`was only initialed on an IDS but not used in a rejection or otherwise substantively addressed during
`prosecution. Decision, 24. The Board denied that request. However, during a conference call held
`to address the request, Petitioner provided examples of such cases. Decision, 24. The Board
`dismissed those decisions as “non-precedential” and stated that they “do not control and/or are
`inapposite to the facts presented in this proceeding.” Decision, 24.
`
`Basis for Request for Precedential Review
`
`
`A. Precedential review is needed to resolve a clear conflict between the panel’s Decision and
`numerous prior Board decisions that have declined to deny institution of a ground under §
`325(d) where the ground relies on a reference that was initialed by an Examiner in an IDS
`but not applied in a rejection or otherwise discussed during prosecution.
`
`Given that neither the Examiner nor the applicant said anything about the reference (Vea’s
`European counterpart) initialed on an IDS, the prosecution history provides no insight into why the
`Office allowed the claims over that reference. Thus, the only way Petitioner could have
`demonstrated “how the Examiner erred in its evaluation of the asserted prior art” (Decision, 21
`citing BD factor (e)) was by demonstrating that Vea renders the challenged claims unpatentable.
`The Petition made that showing in Ground 6 but the Board never considered it. In doing so, the
`Board acted inconsistently with at least five recent Board decisions that applied Advanced Bionics
`and/or BD and declined to exercise discretion under § 325(d) and deny institution of a ground based
`on a reference initialed on an IDS but not discussed during examination. See, e.g., Scientific Design v.
`Shell Oil, IPR2021-01537, Paper 7 (PTAB Mar. 18, 2022); Apple v. Telefonaktiebolaget LM Ericsson,
`IPR2022-00457, Paper 7 (PTAB Sept. 21, 2022); Peloton Interactive v. iFIT, IPR2022-00030, Paper 12
`(PTAB Apr. 12, 2022); STMicroelectronics v. The Trustees of Purdue University, IPR2022-00309, Paper
`14 (PTAB July 6, 2022); Intex Recreation v. Team Worldwide, IPR2018-00871, Paper 14 (PTAB
`September 12, 2018).
`
`The need for precedential review is reinforced by the Board’s explanation that it did not need to
`follow prior panel decisions that were “non-precedential.” Decision, 24. Petitioner identified three
`of the above-cited cases to the Board during the conference call seeking a pre-institution reply. In
`addition to noting that they were non-precedential, the Board indicated that those cases “do not
`control and/or are inapposite to the facts presented in this proceeding.” Decision, 24. As explained
`below, the Board’s attempt to distinguish these prior decisions as “inapposite” is unavailing. These
`cases are clearly in conflict with the present panel’s Decision and highlight the need for a
`precedential decision so that panels will treat this issue consistently.
`
`The Board suggested that IPR2022-00457 was distinguishable because there the “Petitioner made an
`affirmative showing that the Office made a material error” by asserting that “the Office materially
`erred.” Decision, 25. But, as other panels have recognized, BD factor (e) is not about whether the
`Petition invokes the magic word “error” – it is about whether the Petition demonstrates “how the
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`Examiner erred.” Decision, 21. The showing of “how” the examiner erred in the -00457 case was
`the same as here – it was in the Petition’s grounds. In the -00457 case, the panel evaluated that
`showing by considering the grounds. The Board should have done the same here.
`
`The Board suggested that the IPR2022-00309 case was materially different because in the present
`case there were fewer references on an IDS, and the IDS was filed after an interview, so the
`Examiner was “less likely” to have failed to appreciate the contents of Vea’s European counterpart.
`Decision, 25. That is pure speculation. Regardless, even if the likelihood that the Examiner
`overlooked something is relevant to other BD factors, it is irrelevant to the reason the Board cited in
`denying institution here – which was the Petition allegedly failed to show how the Office erred.
`Decision, 23. In the -00309 case, the only showing of how the Office erred was in the Petition’s
`grounds. IPR2022-00309, Paper 14 at 13 (the “Petition presents a compelling unpatentability
`challenge”).
`
`The Board found IPR2018-00871 “inapposite for the simple reason that it predates our precedential
`Advanced Bionics decision establishing the two-part framework.” Decision, 26. The -00871 decision,
`however, highlights that the Board abused its discretion in the present case based on its
`(mis)application of the BD factors. Decision, 21 and 23. The panel in IPR2018-00871 applied the BD
`factors in a markedly different manner from the panel in the present case. The IPR2018-00871
`panel found that the “(c)ursory consideration of later-relied upon prior art” that was only initialed on
`an IDS but not used in a rejection or “substantively discussed during prosecution” “weighs against
`exercising discretion to deny under § 325(d)” under BD factor (c), without even requiring a showing
`that the Office erred in allowing claims over the reference. IPR2018-00871, Paper 14 at 13.
`
`The Rehearing request and this POP request also cite two additional decisions that Petitioner did not
`identify to the Board during the conference call requesting a pre-institution reply. Those cases are
`addressed here to further highlight the conflict between recent decisions and the panel’s Decision.
`In IPR2022-00030, the Petition did not identify any specific error in the Examiner’s analysis because
`there was nothing “in the ’062 patent prosecution history [] establishing the extent to which Studor
`was considered in connection with the ’062 patent claims.” IPR2022-00030, Paper 12 at 14. Despite
`that, the Board evaluated the Petition’s grounds and concluded that “the merits of Petitioner’s”
`Studor-based ground “are strong,” the “patent prosecution history, on the other hand, does not
`address or evaluate Studor in connection with the ’062 patent claims at all. Thus, for purposes of
`deciding whether to invoke our discretion to deny institution under 35 U.S.C. § 325(d), we conclude
`Petitioner has demonstrated the Office erred in a manner material to the patentability of challenged
`claims ….” Id. at 16.
`
`Similarly, in IPR2021-01537, the “Examiner, apart from initialing the asserted art in … IDS[s], did not
`indicate a substantive evaluation of the asserted art.” IPR2021-01537, Paper 7 at 24-25. The
`petition merely stated that “none of [the references] was used in any rejections, or otherwise
`addressed by the examiner.” Paper 2 at 5. Yet, the Board evaluated the petition’s merits to
`determine that “the additional evidence and facts presented in the petition[s] warrant[ed]
`reconsideration of the prior art or arguments.” Paper 12 at 15-16.
`
`The present Decision is clearly inconsistent with at least the five above-discussed Board decisions.
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`
`On the other hand, the approach the present panel took here was recently taken by another panel in
`Microsoft Corporation v. Almondnet, IPR2022-01319, Paper 9 at 10-11 (PTAB Jan. 30, 2023) (denying
`institution under § 325 (d) based on a reference initialed on an IDS but not substantively discussed
`during prosecution because the Petition allegedly did not demonstrate how the Office erred, despite
`grounds purporting to show unpatentability over the reference).
`
`As demonstrated above, there is a clear conflict between various Board decisions addressing
`whether to exercise discretion under § 325(d) based on a reference that was merely initialed on an
`IDS but not substantively applied or discussed during prosecution. POP review and a precedential
`decision are needed to resolve that conflict. SOP 2 at 4 (“The Precedential Opinion Panel also may
`be used to resolve conflicts between Board decisions, to promote certainty and consistency, or to
`rehear any case it determines warrants the Panel’s attention.”).
`
`The “Director has an interest in creating binding norms for fair and efficient Board proceedings, and
`for establishing consistency across decision makers under the Leahy-Smith America Invents Act.”
`SOP 2 at 2 (citing 35 U.S.C. §§ 311-329; Section 18 of the Leahy-Smith America Invents Act, Pub. L.
`No. 112-29, 125 Stat. 284, 329 (2011)). While the Board has discretion under § 325(d), that
`discretion cannot be exercised capriciously or arbitrarily. Rovalma, S.A. v. Bohler-Edelstahl GmbH &
`Co. KG, 856 F.3d 1019, 1024 (Fed. Cir. 2017) (citing 5 U.S.C. § 706). Petitioners, patent owners and
`the PTAB bar alike should be able to rely on the Board exercising its discretion in a consistent
`manner, rather than in a manner that is arbitrarily dependent on which panel handles a particular
`case.
`
`Petitioner requests POP review to establish a consistent standard and precedent under which the
`Board may not exercise its discretion under § 325(d) to deny institution of a ground based on a
`reference submitted in an IDS and initialed by the Examiner, but otherwise not discussed during
`prosecution, without considering whether the ground demonstrates that the Office erred in granting
`the challenged claims over the reference. Where the prosecution history is silent about why the
`Office allowed a claim over a reference, a ground demonstrating that the reference renders the
`claim unpatentable provides a clear showing of how the Office erred in allowing the claim over the
`reference and should be considered on its merits.
`
`
`B. The Decision presents a precedent-setting question of exceptional importance.
`
`As discussed in detail above, in addition to the present case, this email identifies at least five others
`that have addressed this issue in the last year alone. See Scientific Design v. Shell Oil, IPR2021-
`01537, Paper 7 (PTAB Mar. 18, 2022); Apple v. Telefonaktiebolaget LM Ericsson, IPR2022-00457,
`Paper 7 (PTAB Sept. 21, 2022); Peloton Interactive v. iFIT, IPR2022-00030, Paper 12 (PTAB Apr. 12,
`2022); STMicroelectronics v. The Trustees of Purdue University, IPR2022-00309, Paper 14 (PTAB July
`6, 2022); Microsoft Corporation v. Almondnet, IPR2022-01319, Paper 9 at 10-11 (PTAB Jan. 30,
`2023).
`
`The need for Precedential Opinion Panel review to resolve inconsistent panel decisions is especially
`warranted here given the frequency at which Board panels confront the question of whether to
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`exercise discretion to deny a ground under § 325(d) based on art initialed on an IDS but not used in a
`rejection or substantively discussed during prosecution.
`
`/Richard F. Giunta/
`Reg. No. 36,149
`ATTORNEY OF RECORD FOR PETITIONER GOOGLE LLC.
`
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`