The Cabilly ’415 patent is well known in the bio/pharma space as relating to the artificial synthesis of antibody molecules. The Cabilly ‘415 patent’s notoriety was aided by a previous interference, a merged ex partereexamination proceeding, and several Federal District Court Litigations. Nevertheless, Petitioners Sanofi-Aventis and Regeneron Pharmaceuticals petitioned forinter partes review (IPR2015-01624), as previously reported on this blog.

On February 5, the PTAB instituted trial on nearly all challenged claims. Significantly, Patent Owner attempted to rely on the prior office proceedings by requesting that the PTAB “deny institution because the Petition presents the same arguments that were raised and fully addressed in prior Office proceedings involving the Cabilly ‘415 patent.” IPR2015-01624, Preliminary Patent Owner Response at 58. In response, the PTAB specifically noted that “[d]enial of institution under § 325(d) is discretionary,” and that “the particular combination of references upon which we institute were not previously addressed during prosecution or reexamination.” IPR2015-01624, Institution Decision at 24.

Thus, prior office post-grant proceedings are not fatal to an inter partes review challenge, and Petitioners may achieve trial institution success with new arguments or new combinations of references.