325(d) And Printed Publication Issues Doom Petition, PTAB Litigation Blog
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The most persuasive IPR petitions offer fresh unpatentability theories never considered before. But petitions that simply repackage old issues often don’t gain traction. So, when you’re citing prior art that was before the Examiner during original prosecution, you need to emphasize what’s new about your theories. Failure to do so can spell doom under 35 U.S.C. § 325(d), which gives the PTAB discretion to deny institution when a petition relies on the same or similar prior art or arguments as those raised in examination.
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