Section 325(d) gives the Patent Trial and Appeal Board (“PTAB”) discretion to deny a post-grant petition when “the same or substantially the same prior art or arguments previously were presented to the Office.”  35 U.S.C. § 325(d).  Both the PTAB and the Federal Circuit have opined on the discretionary denial provisions in 35 U.S.C. § 325(d) in the context of serial inter partes review (“IPR”) petitions.  The Federal Circuit has now held that § 325(d) applies to requests for ex parte reexamination.  This decision did not involve biotechnological subject matter, but the holdings are nevertheless applicable.
Continue Reading Federal Circuit Applies § 325(d) to Reexamination Requests