Tag Archives: second bite

Board’s Discretion Under § 325(d) Remains Rarely Used

One issue which we’ve been keeping an eye on is the Patent Trial and Appeal Board’s use of its discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review for petitions using “the same or substantially the same prior art or arguments previously [ ] presented to the Office.” (See our previous posts on the topic here and here.)

In an effort to better understand the Board’s use of § 325(d) we reviewed every institution decision issued by the Board in the last 15 months to see (1) whether a petition was opposed under this statutory provision and (2) whether institution was denied as a result. The results of this study, described in greater detail below, suggest that § 325(d) remains rarely used by the Board. That said, Petitioners still must account for this statutory provision by including different prior art or grounds of rejection in the petition, explaining those differences to the Board, and ensuring a proper petition is filed in the first instance to avoid a “second bite” rejection. Continue reading Board’s Discretion Under § 325(d) Remains Rarely Used

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 Travelocity.com 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