Precedential: PTAB Considers § 314(a) Factors Even When Denying Under § 325(d)

When exercising its broad discretion on whether to institute review, the PTAB is not limited to consideration of factors associated with the type of denial it ultimately issues. In a recent decision that the PTAB designated as precedential, the PTAB denied institution under 35 U.S.C. § 325(d) after applying the Becton, Dickinson § 325(d) factors and a factor more commonly associated with its discretion under § 314(a).

In NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., Case IPR2018-00752 (PTAB Sept. 12, 2018) (Paper 8), the PTAB exercised its discretion to deny institution under § 325(d) where the asserted art was a subset of the same prior art that the Examiner applied in rejecting the claims during prosecution. The PTAB found that "simply appl[ying] the same references in the opposite order" could not avoid § 325(d). Specifically, the Petition asserted that certain claims were obvious based on the Braunheim reference in view of the applicant admitted prior art