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PTAB Denies PGR Petition Due To Related Application

PTAB Denies PGR Petition Due To Related Application

by David Maiorana | Jan 21, 2018 | 325(d) issues

By Dave Maiorana By now, most PTAB practitioners are familiar with 35 U.S.C. § 325(d), which gives the Board the authority to deny institution of a post-grant proceeding because the same or substantially the same prior art or arguments were previously presented to the...
Declarations as New Evidence to Overcome § 325(d)

Declarations as New Evidence to Overcome § 325(d)

by Cary Miller | Jan 5, 2018 | 325(d) issues

By Bing Liang, Ph.D. and Cary Miller, Ph.D. We have published other blog postings relating to 35 U.S.C. §325(d), including a blog posting that addresses the PTAB’s October 24, 2017 notice designating three of its decisions as informative (here).  Recently, the PTAB...
PTAB Denies Institution Because of Pending Reexamination Considering Same Prior Art

PTAB Denies Institution Because of Pending Reexamination Considering Same Prior Art

by Geoffrey Gavin | Dec 21, 2017 | 325(d) issues, Trial Institution

By Geoffrey Gavin In a recent decision, the PTAB exercised its discretion under 35 U.S.C. § 325(d) to deny institution of an IPR petition that presented the same prior art before the Patent Office in a pending reexamination.  Fox Factory, Inc. v. SRAM, LLC,...
PTAB Sheds Light on Role of Prior Art in Discretionary Denial

PTAB Sheds Light on Role of Prior Art in Discretionary Denial

by Joe Sauer | Nov 7, 2017 | 325(d) issues, PTAB News, Trial Institution

by Seth M. Bostrom and Joseph M. Sauer The Patent Trial and Appeal Board (PTAB) recently designated as informative three cases involving discretionary denial of inter partes review under 35 U.S.C. § 325(d).  We previously profiled the case of Hospira, Inc. v....
PTAB Decision Provides Guidance On Using Art Previously Considered By The Office

PTAB Decision Provides Guidance On Using Art Previously Considered By The Office

by Matthew Johnson | Oct 27, 2017 | 325(d) issues, Trial Institution

By Rich Graham and Matt Johnson On October 24th, the PTAB designated three decisions related to discretionary petition denials under 35 U.S.C. § 325(d) as informative.  Unified Patents, Inc. v. Berman is discussed below.  We previously reported on Hospira, Inc. v....
PTAB Denies Untimely Request to Stay Pending Reexaminations

PTAB Denies Untimely Request to Stay Pending Reexaminations

by Geoffrey Gavin | Sep 14, 2017 | 325(d) issues

By Geoffrey Gavin In Juniper Networks, Inc. v. Chrimar Systems, Inc., IPR2016-01389, Paper 62 (PTAB Sept. 12, 2017), the PTAB denied Petitioner’s request to stay two reexaminations of patents that were also the subject of pending IPR proceedings. In a pair of IPR...
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    The opinions expressed are those of the authors and do not necessarily reflect the views of Jones Day or its clients. The posts and information provided are for general information purposes and are not intended to be and should not be taken as legal advice.