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 the patentability of challenged claims.
This decision denies institution of an inter partes review based on 35 U.S.C. § 325(d), where the Examiner twice rejected the challenged claims over the same combination of references in the same manner the Petitioner proposed, and the Petitioner failed to show examiner error.
This decision to institute declines to exercise discretion under 35 U.S.C. § 325(d) after determining that the cited art is not substantially the same as the art considered during prosecution and that the Examiner erred in not considering the art during prosecution. The decision also declines to exercise discretion under 35 U.S.C. § 314(a), distinguishing NHK Spring Co. v. IntriPlex Technologies, Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential), because no trial date had been set in the co-pending district court case, and the IPR would not be duplicative of the district court consideration of validity.