On October 24, 2017, the PTAB designated three opinions that address 35 USC 325(d) as informative opinions. See Unified Patents, Inc. v. Berman, IPR2016-01571 (PTAB Dec. 14, 2016) (Paper 10); Hospira, Inc. v. Genentech, Inc., IPR2017-00739 (PTAB July 27, 2017) (Paper 16); Cultec, Inc. v. Stormtech LLC, IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7). In Unified Patents, the Board denied institution because the petitioner asserted an obviousness combination that included a reference the examiner considered during prosecution and a second reference that was cumulative prior art. In Hospira, the Board denied institution because the examiner considered during prosecution the same arguments the petitioner raised regarding patent owner's claim to priority and examiner's determination was dispositive as to asserted grounds of unpatentability. In Cultec, the Board denied institution because (i) the examiner previously considered two of the asserted references; and (ii) two additional references relied upon were cumulative of prior art. Full text is available here.
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