In AIA post-grant proceedings, petitioners occasionally present challenges based on prior art or argumentation that was previously presented to the Patent Office. In some cases, the Patent Trial and Appeal Board (PTAB) has exercised its discretion to deny institution based on the fact that the Patent Office has already considered such prior art or argumentation. Similarly, the PTAB has in some cases denied “follow-on” petitions where a petitioner seeking another bite at the apple files a subsequent petition challenging the same claims that were challenged in an earlier-filed petition.
In such decisions denying institution, the PTAB routinely cites 35 U.S.C. § 325(d) and/or 35 U.S.C. § 314(a) as the basis for exercising its discretion to deny institution. Discussed below are decisions recently designated by the PTAB as informative or precedential which provide guidance on the factors the PTAB considers in determining whether to exercise its discretion under § 325(d) and § 314(a) to deny institution.