So a Petitioner files an IPR with new art combinations that weren’t considered during prosecution, including some new references that weren’t applied by the Examiner. Sounds like a good start to a Petition, right? Think again. A recent IPR got denied under 35 U.S.C. § 325(d) for doing that.
Now stop and let that sink in. An IPR was denied under 325(d) despite citing new art and combinations.… More
315(b) bars are rare, but when applicable they kill petitions dead. Many 315(b) denials involve a straightforward application of the statute, i.e., the Petitioner had been served with a complaint alleging infringement of the challenged patent more than one year before the petition date. E.g. Accord Healthcare Inc. v. Eli Lily & Co., IPR2013-00356, Paper 13 (Kamholz, APJ). But I also wrote decisions denying petitions because 315(b) had been triggered in a more nuanced or unexpected way. … More