Patent Owner also cites to the legislative history of the AIA,11 noting: Congress intended for serial invalidity attacks that unduly multiply the proceedings to be terminated under §§ 315(d) & 325(d) and 37 C.F.R. § 42.122(a).
Petitioner asserts further that Roche acquired Ariosa after this proceeding was instituted, and, thus, on April 24, 2015, filed a petition in IPR2015-01091 that included grounds over Straus, as well as over a new reference, Shuber.
The statute expressly contemplates denial of review when the art applied in two petitions is different, but the arguments are “substantially the same.” Id. Petitioner raised patentability over the work of Straus initially in the instant proceeding, and then again in IPR2015-01091.
Petitioner does not appear to have provided an explanation as to why it could not have presented its invalidity grounds challenging the ’794 patent in its requests for ex parte reexamination in the petition filed in the instant proceeding.
Petitioner has provided no reason why it waited until December 2015 and January 2016 to file its requests for ex parte reexamination, using variations of art it cited in both the instant proceeding, and IPR2015-01091.