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A Single Bite at the Apple: The Board’s Discretion to Deny Institution under § 314(a), PTAB Litigation Blog

April 2017

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In a series of related decisions issued in April 2017, the PTAB exercised its discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to deny institution of inter partes review petitions filed by Xactware Solutions, Inc. against Eagle View Technologies, Inc. (IPR2017-00021, IPR2017-00025, IPR2017-00027, and IPR2017-00034.) Xactware had filed the petitions to assert alternative grounds after having received the PTAB’s decisions not to institute certain claims of Xactware’s earlier petitions involving the same patents. Even though Xactware’s second set of grounds did not constitute the “same or substantially the same prior art or arguments” previously presented, 35 U.S.C. § 325(d), the PTAB nonetheless found Xactware’s strategy to be unfair and prejudicial to the patent owner, and denied institution.

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