The PTAB recently designated two decisions as precedential and
one decision as informative with respect to 35 U.S.C. §
325(d). 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).
Until recently, only the Becton Dickinson precedential
case addressed section 325(d) (though several informative decisions
existed). The Becton Dickinson case dictated a number of
factors the Board should weigh in making a determination under
325(d), including but not necessarily limited to:
(a) the similarities and material
differences between the asserted art and the prior art involved
during examination;
