If at First You Don’t Succeed, Don’t Try, Try, Again

It is common for petitioners to file multiple petitions challenging a patent.  The chief advantage of this strategy is an additional 60 pages of argument for each additional petition filed.  Sometimes, however, the petitioner will follow up with a second petition to mop up the claims it “missed” in an earlier petition.  The Board has been increasingly sensitive to this, finding that it is really just an improper request for rehearing of a question already decided.  This was the case in Butamax(TM) Advanced Biofuels LLC v. GEVO, Inc., IPR2014-00581, Paper 9 (October 14, 2014), where the Board denied Butamax’s petition calling it “an attempt to request rehearing of a prior decision instituting trial, outside the time period provided in our Rules for such requests” and citing Microsoft Corp. v. Enfish, LLC, Case IPR2014-00577, slip op. at 8 (PTAB Sept. 29, 2014) (Paper 12) (denying second petition that is “essentially a rehearing request”).

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.