Tag Archives: 325(d)

Estoppel Prevents Second IPR Petition Even When New References Were Missed By First Search

In a case that appears to be a case of first impression, the PTAB found in its decision denying institution in IPR2016-00781 that a final written decision in an earlier IPR created estoppel under 35 U.S.C. § 315(e)(1), preventing a second IPR petition from being instituted that used additional references which reasonably could have been raised before, even though … Continue reading this entry

PTAB Institutes Trial On Previously Challenged Cabilly Patent

The Cabilly ’415 patent is well known in the bio/pharma space as relating to the artificial synthesis of antibody molecules. The Cabilly ‘415 patent’s notoriety was aided by a previous interference, a merged ex parte reexamination proceeding, and several Federal District Court Litigations. Nevertheless, Petitioners Sanofi-Aventis and Regeneron Pharmaceuticals petitioned for inter partes review (IPR2015-01624), … Continue reading this entry

Estoppel Versus Discretion: How is the PTAB Deciding Multiple Petitions Against the Same Patent?

The PTAB has denied petitions filed by the same petitioner against the same claims, even where the subsequent petition relied upon completely different prior art (IPR2014-00506), reasoning that a petitioner should not hold back its best references for a subsequent attempt.  But what happens when the same petitioner files a new petition (after a first petition is denied) against … Continue reading this entry