Last week, the PTAB designated two 35 U.S.C. § 325(d) cases
precedential and one informative. These cases discuss the
Board's process for deciding when to use their discretion to
deny institution because a Petition raises issues that the Patent
Office previously considered in other proceedings (e.g., during
prosecution, prior reexams).
The PTAB Litigation Blog will report on each of these decisions
in detail in the coming days.
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
