On October 24th, the PTAB issued the following notice, designating the following decisions, which address 35 U.S.C. § 325(d), as informative.

Unified Patents, Inc. v. Berman, Case IPR2016-01571 (PTAB Dec. 14, 2016) (Paper 10)

In this decision, the Board denied institution of one ground under § 325(d) because the petitioner asserted an obviousness combination that included a reference the examiner considered during prosecution and a second reference that was cumulative of prior art that the examiner considered. The Board also declined to exercise discretion under § 325(d) with respect to a second asserted obviousness combination, where the examiner did not consider the asserted references during prosecution, and the references were not cumulative of the prior art the examiner considered during prosecution.

Hospira, Inc. v. Genentech, Inc., Case IPR2017-00739 (PTAB July 27, 2017) (Paper 16)

In this decision, the Board denied institution under § 325(d) because the examiner considered during prosecution, and found persuasive, the same arguments the petitioner raised regarding the patent owner’s claim to priority. The Board concluded that the examiner’s previous priority determination was dispositive as to each of the asserted grounds of unpatentability.

Cultec, Inc. v. Stormtech LLC, Case IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7)

In this decision, the Board denied institution under § 325(d) because (i) the examiner previously considered two of the asserted references—one reference was raised in a third-party submission that the examiner discussed in rejecting the claims and the other reference the examiner cited and applied throughout prosecution; and (ii) the two additional references upon which the petitioner relied were cumulative of prior art the examiner considered during prosecution.