PTAB Designates Three Decisions On Discretion To Institute Review

The PTAB recently designated two decisions as precedential and one decision as informative on discretion to institute review.

Becton, Dickinson and Company v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8) - (precedential as to section III.C.5, first paragraph (pages 17-18))

This decision discusses non-exclusive factors considered by the Board under 35 U.S.C. § 325(d) when determining whether to institute an inter partes review. The Office previously designated Becton Dickinson as informative and now further designates a portion of that decision as precedential, consistent with guidance set forth in the July 2019 Update to the Trial Practice Guide, which included the Becton Dickinson factors. The portion of the decision that is precedential identifies six non-exclusive factors that the Board considers in evaluating whether to exercise discretion under § 325(d), when a petition includes the same or substantially the same prior art or arguments that previously were presented to the Office.

See our previous coverage of Becton Dickinson here.

Valve Corporation v. Electronic Scripting Products, Inc., Case IPR2019-00064, -00065, -00085 (PTAB May 1, 2019) (Paper 10) ("Valve II") (precedential)

This decision concerns the denial of institution of an inter partes review based on 35 U.S.C. § 314(a), after applying the General Plastic factors. This decision provides further guidance following Valve Corp. v. Elec. Scripting Prods., Inc., Case IPR2019-00062, -00063, -00084 (PTAB Apr. 2, 2019) (Paper 11) ("Valve I") (explaining that the Board considers any relationship between petitioners when weighing the General Plastic factors), previously designated as precedential. Particularly, the decision states that the first General Plastic factor ("whether the same petitioner previously filed a petition directed to the same...