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
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
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.”
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.
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.