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ARTICLE · 20 JANUARY 2022

Section 325(d) – Twelfth Time Not A Charm

Jones Day
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This blog has previously discussed PTAB's exercise of discretion under Section 325(d). Sometimes the PTAB has invoked Section 325(d) to deny institution; sometimes it has declined to apply Section 325(d)...

United StatesIntellectual Property
Matthew Johnson
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This blog has previously discussed PTAB's exercise of discretion under Section 325(d). Sometimes the PTAB has invoked Section 325(d) to deny institution; sometimes it has declined to apply Section 325(d) and instituted inter partes review. Recently, the PTAB was faced with the situation in which multiple petitioners had made the same priority argument in eleven prior petitions, all of which had been rejected by the PTAB; the twelfth attempt fared no better. Intel Corporation v. ACQIS LLC, IPR2021-01105, Paper No. 11 (PTAB Jan. 5, 2022).

Intel  involves a challenge to the Patent Owner's claim of priority. There, the '912 Application was the grandparent of the challenged Patent No. 8,977,797 ("the '797 Patent"). During the prosecution of the '912 Application, the applicant added new figures and material from Chu '886 by amendment, claiming the benefit of Chu '886 in the Remarks section of the amendments. The Examiner did not object to the amendments or require that

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