Authorized To Cross-Examine After Declaration Was Filed Regardless Of Service Date IPR2015-00014

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Takeaway: A party is not required to cross-examine a declarant at the time when the opposing party is first served with the declaration; rather, cross-examination can take place after supplemental evidence relating to the direct testimony has been filed.

In its Order, the Board mooted Patent Owner’s Request for Authorization to depose Petitioner’s declarant and ordered Petitioner to expunge the declarant’s testimony from the proceedings.      Continue reading

Reply to Preliminary Response Authorized To Address Standing CBM2015-00168, 178

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Takeaway: When the Patent Owner Preliminary Response raises an issue concerning standing of Petitioner, the Board may authorize Petitioner to file a Reply limited to addressing the standing issue.

In its Order, the Board authorized Petitioner to file a Reply to Patent Owner’s Preliminary Response limited to addressing Petitioner’s interpretation of statutes and regulations related to the issue of standing. The Board also authorized Petitioner to file an additional briefing regarding the claim construction issue. Continue reading

Decision Denying Institution Where A Technological Invention Exists CBM2015-00116

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Takeaway: Although the financial product or service portion of the covered business method test is ordinarily addressed before the technological invention exclusion, because the technological invention exclusion is dispositive, that sequence is not required.

In its Decision, the Board did not institute covered business method patent review of any challenged claim of the ‘246 patent. The Board reached this conclusion because it was not persuaded that ‘246 patent qualifies as a “covered business method patent” under § 18(d)(1) of the AIA.

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Final Written Decision Finding Challenged Claim Not Unpatentable IPR2014-01002

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Takeaway: In an obviousness analysis, (1) to rely on inherency to establish the existence of a missing claim limitation the limitation necessarily must be present or the natural result of the combination of elements explicitly disclosed by the prior art, and (2) a party must avoid analyzing the prior art through the prism of hindsight and not imbue one of ordinary skill in the art with knowledge of the claimed invention when there is insufficient evidence of record to convey or suggest that knowledge.

In its Final Written Decision, the Board determined that Petitioner had not shown by a preponderance of the evidence that claim 10 of the ’509 patent is unpatentable. The ’509 patent “is directed to aluminum-lithium based alloy products displaying a combination of high strength and high fracture toughness.” Inter partes review of claim 10 had been instituted on three grounds of unpatentability based on obviousness. Continue reading

Granting Motion to Strike Objections for Being Untimely IPR2015-00224

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Takeaway: Objections to a declaration submitted with a petition should be served within ten business days of the decision instituting trial.

In its Order, the Board granted Petitioner’s opposed motion to strike Patent Owner’s objections to Petitioner’s evidence. Patent Owner had objected to Petitioner’s declaration submitted with the Petition where the witness allegedly “admitted during his deposition that the opinions he presents in the [declaration] are not based on sufficient facts or data, are not the product of reliable principles and method, and are not reliably applied to the facts of this proceeding.” Continue reading

Institution of Inter Partes Review IPR2015-01117

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Takeaway: The crux of a determination that a party is a real party-in-interest is whether that party has control over the proceeding.

In its Decision, the Board found a reasonable likelihood that Petitioner would prevail on its challenges to claims 1-12 of the ’012 Patent, and instituted inter partes review. The ’012 Patent is directed to “treatment of patients with nitrogen retention states, in particular urea cycle disorders (UCDs) . . . [by] administer[ing] compounds that assist in elimination of waste nitrogen from the body.”

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Motion to Stay Reissue Proceedings Denied as Premature IPR2015-01690; IPR2015-01691

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Takeaway: If a petitioner requests authorization for leave to file a motion to stay a pending ex parte reissue proceeding before the inter partes review is instituted, the Board will likely deny the request as premature.

In its Order, the Board determined that a stay of ex parte reissue proceedings was not warranted at this time. The patent-at-issue in the inter partes review proceedings is also currently the subject of three ex parte reissue proceedings. Petitioner sought authorization to file a motion to stay the ex parte reissue proceedings, and Patent Owner opposed.

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Final Written Decision Finding Claims Unpatentable Where A Nexus For Secondary Considerations Is Not Established IPR2014-00680

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Takeaway: Objective indicia “must be tied to the novel elements of the claim at issue” and must “be reasonably commensurate with the scope of the claims.”

In its Final Written Decision, the Board found that claims 7-11 of the ‘586 patent were demonstrated by a preponderance of the evidence to be unpatentable. Also, the Board granted-in-part, denied-in-part, and dismissed-in-part as moot, Petitioner’s Motion to Exclude. Patent Owner’s Motion to Exclude was denied, as well.

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Final Written Decision Holding that CIP Not Presumed to be Entitled to Earlier Filing Date IPR2014-00824

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Takeaway: A continuation-in-part application is not presumed to be entitled to the filing date of an earlier filed application, and the burden of production falls on the party asserting that an application is entitled to an earlier filing date. Continue reading