PTAB Uses § 325(d) to Prevent a Second Bite

Earlier this month we explored the Board’s discretionary power under 35 U.S.C. § 325(d) to deny a petition premised on prior art or arguments previously considered by the U.S. Patent and Trademark Office. Shortly after that blog post, the Board issued another decision illustrating its use of § 325(d) to deny institution of a review where petitioners seek a so-called “second bite at the apple.”

In LP v. Cronos Technologies, LLC, the Board denied a Petition for Covered Business Method Review “[i]n view of the substantially similar arguments presented and the same references applied in an earlier Petition.” CBM2015-00047, Paper 7, 2 (PTAB June 15, 2015). Continue reading “PTAB Uses § 325(d) to Prevent a Second Bite”

Mission (Nearly) Impossible: Motion to Amend Claims

With the Patent Trial and Appeal Board recently granting a patent owner’s motion to amend claims for just the third time in its nearly three-year history, it seems like a good time to review the high bar the Board has set for such motions. See REG Synthetic Fuels, LLC v. Neste Oil OYJ, IPR2014-00192, Paper 48, 18-30 (PTAB June 5, 2015); Riverbed Tech. Inc. v. Silver Peak Sys. Inc., IPR2013-00402, Paper 35 (PTAB Dec. 30, 2014); Int’l Flavors & Fragrances Inc. v. United States, IPR2013-00124, Paper 12 (PTAB May 20, 2014).

Continue reading “Mission (Nearly) Impossible: Motion to Amend Claims”

Patent Owner Challenges Under 35 U.S.C. § 325(d)

One issue commonly raised by a patent owner in their Preliminary Response is the Board’s ability to deny institution because the petitioner’s proposed grounds are premised on prior art previously considered by the U.S. Patent and Trademark Office. The patent owner argues that the prior art at issue was previously raised during prosecution, in a reexamination, or in a prior petition for inter partes review of the challenged patent. Under 35 U.S.C. § 325(d), the Board has discretion to deny a petition where it is based on arguments and prior art already seen at the PTO:

“In 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.” 35 U.S.C. § 325(d).

Continue reading “Patent Owner Challenges Under 35 U.S.C. § 325(d)”

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The opinions expressed on this blog are those of the author and are not to be construed as legal advice.

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