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ARTICLE · 07 APRIL 2020

PTAB Adds To 325(d) Precedent

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This decision denies institution of an inter partes review based on 35 U.S.C. § 325(d), explaining that the Board uses a two-part framework for exercising discretion under § 325(d).

United StatesIntellectual Property
Scott A. McKeown
Scott A. McKeown
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PTAB Designates New Precedential & Informative Decisions on Discretionary Institution Practices

Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469 (PTAB Feb. 13, 2020) (Paper 6) (precedential)

This decision denies institution of an inter partes review based on 35 U.S.C. § 325(d), explaining that the Board uses a two-part framework for exercising discretion under § 325(d). After applying the framework, the Board determined that the Petition presents the same or substantially the same prior art previously presented to the Office and that the Petitioner failed to show that the Examiner materially erred as to the patentability of challenged claims.

PUMA North America, Inc. v. NIKE, Inc., IPR2019-01042 (PTAB Oct. 31, 2019) (Paper 10) (informative)

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