§ 325(d) for § 101 CBM Petition, PTAB Litigation Blog

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The PTAB’s decision on whether or not to institute trial in a particular matter is discretionary. See Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) ("the PTO is permitted, but never compelled, to institute an IPR proceeding"). Under 35 U.S.C. § 325(d) the PTAB may take into account and reject a petition because "the same or substantially the same prior art or arguments previously were presented to the Office." Because IPRs are by far the most popular flavor of PTAB post-issue patentability review, the § 325(d) decision is typically considered under the lens of prior-art unpatentability. There, § 325(d) guideposts have been developed that include how similar the prior art asserted in the petition is to prior art previously considered by the Patent Office and whether the petitioner is bringing new evidence or significant arguments to the table to entice the Board to reconsider previous prior art determinations. See, Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (discussed here).

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