USPTO Director Vacates and Remands PTAB’s Institution Decision Over Insufficient Explanation of Findings

April 25, 2024

Reading Time : 2 min

The USPTO Director vacated a Patent Trial and Appeal Board decision denying institution of inter partes review for not addressing alleged differences between references in the petition and those considered during prosecution. The Director determined that the board did not sufficiently explain its findings and remanded for further proceedings.

Petitioner filed IPR petitions challenging three related patents and the patent owner responded with preliminary responses arguing that the petitions should be denied on the basis that “the same or substantially the same prior art or arguments previously were presented to the Office.” 325 U.S.C. § 325(d); see Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (providing a two-part framework for discretionary denial on this basis). Petitioner’s references in the IPRs were not identical to those previously presented to the Office and petitioner alleged material differences between the two sets of references.

The board sided with the patent owner and denied institution of all three IPRs without disagreeing with, or finding immaterial, petitioner’s alleged differences between the IPR and prosecution references. For example, in one IPR, the board simply stated that it was “unpersuaded” regarding petitioner’s contentions, but did not provide explanation or analysis to support its conclusion. Petitioner requested Director Review, arguing that the board did not address the substance of the arguments and, instead, improperly “focused on the similarity of the claim limitations covered by the references, rather than on assessing the…content of the references.”

The Director determined that the board failed to adequately explain its analysis of whether substantially the same prior art or substantially the same arguments were previously presented (i.e., the first prong of the Advanced Bionics framework). In particular, the board did not disagree with petitioner’s explanation of the alleged differences in the references, it did not find those differences to be immaterial, and it did not provide a sufficient comparison of what was previously considered to what was submitted by the petitioner in the IPRs. The Director explained that the board must address the alleged differences to resolve whether substantially the same references were previously considered and simply comparing individual elements of the references is insufficient without more analysis. Similarly, relying on vague or high-level similarities cannot substitute for detailed reasoning, such as identifying substantive and material overlap between the references or determining that the petitioner’s and examiner’s arguments rely on the same rationale.

Practice Tip: If references or arguments in a petition are similar to ones previously before the Office, petitioners should clearly identify substantive differences to distinguish the petition over earlier proceedings. Patent owners seeking an institution denial based on the similarity of references or arguments should provide examples demonstrating the overlap, or immateriality of any alleged differences, between references. Conversely, should the board not provide sufficient explanation of its findings under the first prong of the Advanced Bionics framework, petitioners would be well advised to seek to vacate a decision denying institution.

Nokia of America Corp. v. Alexander Soto, IPR2023-00680, -00681, -00682, Paper No. 18 (Vidal Mar. 28, 2023)

Share This Insight

Previous Entries

IP Newsflash

October 1, 2025

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

...

Read More

IP Newsflash

September 30, 2025

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

...

Read More

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.