On March 24, 2020, three PTAB decisions applying 35 U.S.C.
§ 325(d) were designated precedential or
informative. The trio of decisions clarify the Board's
use of its discretion under that statutory section.
Advanced Bionics, LLC v. MED-EL
Elektromedizinische Geräte GmbH, IPR2019-01469, Paper
6 (Feb. 13, 2020) (precedential)
In Advanced Bionics, the Board exercised its discretion
to deny institution of inter partes review under 35 U.S.C.
§ 325(d). In doing so, the Board clarified that
§ 325(d) presents two distinct issues it must consider:
first, whether the petition presents the same or substantially the
same art as previously presented to the Office; and
second, whether the petition presents the same or substantially the
same arguments as previously presented to the
Office. Each inquiry is separate and highly factual, and can
be decided by looking to the factors laid out in
Becton, Dickinson & Co. v. B. Braun Melsungen AG,
IPR2017-01586, Paper 8 (Dec. 15,
