During the week of August 13, the Board issued one decision in Technology Center 1600, which denied institution of inter partes review. The decision is as follows:
Hologic, Inc. v. bioMérieux, Inc., No. IPR2018-00569 (Decision Entered August 10, 2018). In ground 1 of its petition, Hologic challenged claims 1–6 of U.S. Patent No. 8,697,352 (“the ’352 patent”) as obvious based on references by Backus, Sooknanan, and Myers. In ground 2, Hologic challenged claims 1-6 of the ’352 patent as obvious based on references by Bell, Sooknanan, and Myers. bioMérieux argued that the Board should exercise its discretion under 35 U.S.C. § 325(d) to deny institution because “the Examiner considered the same arguments the Petition advances” and Hologic did “not identify any new art or raise any new arguments that should lead the Board to reach a different conclusion.” IPR2018-00569, Paper 9 at 13 (informative). The Board reviewed the non-exclusive factors laid out in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, slip op. at 17–18 (Paper 8, Dec. 15, 2017), and concluded that on balance, the factors supported exercising the Board’s discretion to deny institution. The Board concluded that, while the Examiner did not consider the Sooknanan reference during prosecution, and Sooknanan is not listed on the face of the patent, substantially similar prior art references were considered during prosecution. IPR2018-00569, Paper 9 at 16. The Board observed that the Examiner expressly considered the primary references on which Petitioner based its grounds for unpatentability. Id. at 26. Moreover, Petitioner made arguments that were “substantially similar to the findings the Examiner made to reject the claims, and that the patent applicants overcame with evidence.” Id. Accordingly, the Board exercised its discretion to deny institution under § 325(d).