USPTO Director Vidal continues to take an active role in inter partes reviews, granting Director review of a set of discretionary denials of institution under § 325(d). In Nokia v. Soto, IPR2023-00680-682, the PTAB denied institution, finding that even while the asserted grounds relied on prior art not previously presented to the Patent Office, previously cited references were asserted in the same way, i.e., primary references targeted the claimed electrical components and secondary references were cited for the claimed form factor. The PTAB relies on a two-part test to determine whether discretionary denial is appropriate: (1) whether the same or substantially similar art or arguments were previously presented; and (2) if so, whether there was a material error in considering the previously presented art or arguments.
Even though the grounds raised by the petitions may have been combined similarly with respect to the challenged limitations, the Petitioner’s request for review stressed the differences between the way those references disclosed electrical components and form factors, and the different motivations to combine those references over previously presented motivations. Further specific guidance on what differences are material to the discretionary denial analysis would shed light for Petitioners, Patent Owners, and PTAB panels alike.