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As the patent owner, Purdue argued that the PTAB should decline institution under § 325(d) because the primary reference for both grounds in the Petition —
In deciding whether to institute the IPR, the PTAB used the Advanced Bionics two-part framework. Under this test, the first prong is "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." Paper 14 at 11. The second prong is "if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims." Id.
In regard to the first prong, the PTAB observed that "Ueno was previously presented to the Office during prosecution of the '112 patent." Id. at 12. The PTAB further noted that STM itself acknowledged that Ueno was of record in the '112 patent. Id.; see Paper 2 at 25.
Under the second prong, the PTAB agreed with STM, explaining that "the Petition establishes that the Office erred in a manner material to the patentability of the challenged claims." Paper 14 at 13. In doing so, the PTAB was persuaded by STM's showing that "Ueno discloses the subject matter that the examiner found missing in the art applied during prosecution."
In conclusion, the PTAB instituted IPR, given the two-part Advanced Bionics framework weighed in STM's favor.
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