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The PTAB has provided guidance on the standard for exercising its discretion to deny institution under § 325(d).  The guidance comes in the form of two decisions designated as precedential and one decision designated as informative, discussed below.

The Board’s Two-Part Framework for Applying § 325(d)

In determining whether to institute trial, the Board takes into account whether the same or substantially the same prior art or arguments were previously presented to the Office in accordance with 35 U.S.C. § 325(d).  The Board routinely considers the factors set forth in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) in making such determinations.

Read the full article on our blog, Buchanan PTAB Report.