Addressing the scope of its discretion under 35 USC § 325(d), the Patent Trial and Appeal Board (PTAB) designated two opinions as precedential or informative.

In Adaptics Limited v. Perfect Company, Case No. 2018-01596 (PTAB Mar. 6, 2019) (Roesel, APJ) (designated informative on August 2, 2019), the PTAB determined that the petitioner’s “kitchen sink” approach to presenting invalidity grounds warranted denial of the petition under § 314(a) because it lacked particularity as required under § 312(a)(3). The petition’s grounds of invalidity contained numerous alternative arguments for swapping out alternative references and included a “catch-all” ground that would have covered seven alternative pieces of prior art. In addition, the public availability of some of the prior art was disputed. The PTAB reasoned that even if there were a reasonable likelihood that one of the myriad combinations would render a claim non-patentable, the all-or-nothing mandate of SAS would require resolving an excessive number of issues. The petition’s lack of particularity would thwart the efficient administration of the US Patent and Trademark Office, so the PTAB used its discretion to deny institution.

In Becton, Dickinson and Co. v. B. Braun Melsungen AG, Case No. IPR2017-01586 (PTAB Dec. 15, 2017) (Daniels, APJ) (designated as precedential on August 2, 2019, as to Section III.C.5), the PTAB analyzed what constitutes “substantially the same prior art” previously considered by the Office for purposes of using its discretion to decline institution under 35 USC § 325(d). The petition included invalidity grounds based on the combination of one reference previously used in a rejection during prosecution and a second reference that was not considered by the Office during prosecution. The PTAB concluded that even if a different reference is used in the petition than was previously considered during prosecution, this fact still weighs in favor of denial when the newly used reference contains materially the same disclosures as the previously considered reference. Where the structural differences do not affect the functioning of the prior art in any meaningful manner and where the arguments raised in the petition follow the same reasoning as previously advanced by the Office, the PTAB gives little weight to the fact that the prior art disclosure comes from a different reference than was previously considered by the Office.