The Patent Trial and Appeal Board (PTAB) has the discretion to deny institution of an inter partes review (IPR) proceeding under 35 U.S.C. § 325(d) if “the same or substantially the same prior art or arguments previously were presented to the Office.” In Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH (“Advanced Bionics”), the PTAB established a two-part framework for determining whether a PTAB panel should exercise discretion under Section 325(d). This article surveys recent PTAB decisions having the common fact that the IPR challenges rely upon prior art that is the same or substantially the same as prior art submitted in an IDS during prosecution to glean insights as to how parties and the Board are addressing Advanced Bionics in this scenario.
Earlier this year, the Patent Trial and Appeal Board (PTAB) established a two-part framework for applying 35 U.S.C. § 325(d), under which the PTAB may deny institution of an inter partes review (IPR) if substantially the same art or arguments previously were presented to the U.S. Patent and Trademark Office (USPTO). This framework injects a degree of rigor into the PTAB’s discretionary Section 325(d) determinations and suggests ways that IPR participants may more effectively raise or resist Section 325(d) arguments. The framework and its practical implications are discussed below.