The USPTO recently denied a request for ex parte reexamination (“EPR”) after concluding that the Requester, Geotab USA, Inc., was attempting to relitigate substantially the same prior art and invalidity arguments that it had previously raised in an unsuccessful inter partes review (“IPR”) petition.
The USPTO had earlier denied institution of Geotab’s IPR petition under its discretionary authori-ty, citing factors including the patent owner’s settled expectations after more than eleven years of patent ownership and the petitioner’s prior knowledge of the asserted patents. In denying the sub-sequent EPR request, the USPTO emphasized that Geotab was the same party that filed the earlier IPR petition and that the EPR request relied on “the same or substantially the same prior art or ar-guments previously presented to the Office.” The USPTO therefore exercised its authority under § 325(d) and denied the request outright.
