The Patent Trial and Appeal Board on March 24, 2020 designated as precedential this decision denying institution of the inter partes review and explained that the Board utilizes a two-part framework in determining whether or not to exercise discretion under 35 U.S.C. 325(d).
35 U.S.C. 325(d) states "[i]n determining whether to institute or order a proceeding..., the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office."
"[U]nder 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review. If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability."
Read the case here.