The PTAB has provided guidance on the standard for exercising
its discretion to deny institution under § 325(d). The
guidance comes in the form of two decisions designated as
precedential and one decision designated as informative, discussed
below.
The Board's Two-Part Framework for Applying §
325(d)
In determining whether to institute trial, the Board takes into
account whether the same or substantially the same prior art or
arguments were previously presented to the Office in accordance
with 35 U.S.C. § 325(d). The Board routinely considers the
factors set forth in Becton, Dickinson & Co. v. B. Braun
Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017)
(precedential as to § III.C.5, first paragraph) in making such
determinations.
