PTAB Denies PGR Petition Due To Related Application

By now, most PTAB practitioners are familiar with 35 U.S.C. § 325(d), which gives the Board the authority to deny institution of a post-grant proceeding because the same or substantially the same prior art or arguments were previously presented to the Office. You can find a myriad of such decisions on our blog.

In the typical 325(d) situation, the Board denies institution because the petitioner presented arguments that the Office considered during the original prosecution of the patent-at-issue, or that the Office considered in another post-grant proceeding. Typically, the prior proceeding on which the Board based its 325(d) denial involved the same patent being challenged in the current petition. In a recent decision, however, the Board went further and based a 325(d) denial on a previous proceeding regarding a different, but related, patent.