One issue which we've been keeping an eye on is the Patent
Trial and Appeal Board's use of its discretion under 35 U.S.C.
§ 325(d) to deny institution of inter partes review
for petitions using "the same or substantially the same prior
art or arguments previously [ ] presented to the Office." (See
our previous posts on the topic
here and
here.)
In an effort to better understand the Board's use of §
325(d) we reviewed every institution decision issued by the Board
in the last 15 months to see (1) whether a petition was opposed
under this statutory provision and (2) whether institution was
denied as a result. The results of this study, described in greater
detail below, suggest that § 325(d) remains rarely used by the
Board. That said, Petitioners still must account for this statutory
provision by including different prior art or grounds of rejection
in the petition, explaining those differences to the Board, and
ensuring a proper petition is filed in the first
