In IPR2016-00781, the PTAB denied institution on the grounds that the petitioner was estopped with respect to the claims of U.S. Patent No. 8,846,112 ("the '112 patent"). In an earlier proceeding brought by the petitioner, IPR2015-00529, the PTAB issued a Final Written Decision adjudicating all claims of the '112 patent.
During the prosecution of an application related to the '112 patent while that earlier IPR was pending, the PTO cited two prior art references, Greenough and Jaypee, as relevant to obviousness. Contending that these references were previously unknown and only recently discovered, the petitioner brought the IPR at issue. In support, the petitioner cited a report from the earlier invalidity search it had commissioned. The petitioner also explained that, after the earlier IPR was filed, it had intensified its efforts to generate prior art because it had been sued by the patent owner in district court.
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