Order Granting Motion to Stay Reexam IPR2014-00043

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Takeaway: A likely inconsistent result between an ex parte reexamination and an inter partes review is an important consideration in whether a stay of the reexamination is warranted.

In its Order, the Board granted Petitioner’s request for a stay of the co-pending ex parte reexamination and did not address Petitioner’s alternative request to consolidate the reexamination.  The Board may stay, transfer, consolidate, or terminate another proceeding or matter involving the same patent before the Office.  However, the Board “ordinarily will not stay a reexamination because, in the absence of good cause, reexaminations are conducted with special dispatch.” Continue reading

Order Denying Motion to Stay Petitions IPR2013-00194, IPR2013-00195, CBM2013-00013

Takeaway: The Board is unlikely to stay PTAB proceedings pending appeal of a district court’s finding of invalidity, particularly where the issues in the district court and in front of the Board are different.

In its Order, the Board denied Patent Owner’s request to stay two related inter partes review proceedings and a related covered business method review in light of a district court’s finding that all of the challenged patents were invalid as being indefinite.  In light of its ruling regarding the requested stay, the Board granted the parties’ previous request for oral hearing. Continue reading

Final Written Decision (Motion to Amend) IPR2013-00071

Takeaway: Failure to support unpatentability grounds with expert testimony filed with the petition cannot be corrected through later-filed expert declarations.

In its Final Written Decision, the Board found that Petitioners had not shown by a preponderance of the evidence that challenged claims 6 and 9 of the ‘930 patent are unpatentable. Continue reading

Holding Terminal Disclaimer in Abeyance Pending Outcome of the Proceeding IPR2013-00242

Takeaway: The Board can hold the filing of a terminal disclaimer in abeyance pending the outcome of the proceeding to avoid switching the claim interpretation standard of the proceeding, and may choose to do so when the patent owner waits until after all substantive briefing is completed and the evidentiary record is closed to file the terminal disclaimer.

In its Order, the Board ordered that the terminal disclaimer filed by Patent Owner as to the patent at issue be held in abeyance until the instant proceeding terminates or a final written decision is issued, and that the challenged claims will continue to be given their broadest reasonable interpretation in light of the patent. Continue reading

Final Written Decision IPR2013-00082

Takeaway: Basing one’s patentability arguments on a claim construction at odds with the construction set forth in the Decision on Institution runs the risk that the Board will adopt its previous construction and simply discredit any inconsistent arguments.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that all the challenged claims of the ‘791 patent are unpatentable. Continue reading

Final Written Decision Upholding Patentability of Challenged Claims IPR2013-00063

Takeaway: If a patent owner disputes the date of publication of a piece of prior art, it must serve an objection on the petitioner within ten business days of institution of trial and then file a subsequent motion to exclude at the proper time. Noting the dispute in a footnote of the patent owner response is not enough to preserve such an objection.

In its Final Written Decision, the Board found that Petitioner had not met its burden to prove by a preponderance of the evidence that claims 1-5 of the ’058 Patent are unpatentable. The Board had instituted trial on those claims on a single ground:  obviousness over the combination of Gertz, Stewart, and Morrow.  The Board relied on its analysis in its Final Decision of IPR2013-00062 (“062 Decision”) in this Decision.  The Board also dismissed Patent Owner’s Motion to Exclude and Motion to Submit Supplemental Information. Continue reading

Final Written Decision and Denying Motion to Amend Without Prejudice IPR2013-00048

Takeaway: The Board may still find that the petitioner has not met its burden of showing that a limitation is disclosed by prior art if petitioner does not support its argument with sufficient facts and data, even in instances where the patent owner does not challenge petitioner’s evidence.

In its Final Written Decision, the Board found that claims 5, 13, 17, 19, 22, 37, 45, and 49 of the ’189 Patent are unpatentable, the remaining claims of the ’189 Patent (1-4, 6-12, 14-16, 18-28, 30-32, 34-36, 38-44, 46-48, and 50-52) are not unpatentable, the Motion to Amend Claims is denied without prejudice, Petitioner’s Motion to Exclude Evidence is dismissed, and Patent Owner’s Motion to Exclude Evidence is dismissed-in-part and denied-in-part. Continue reading

Denying Motion for Rehearing of Decision on Institution IPR2013-00572

Takeaway: In reviewing a decision on institution, the Board may look to rulings in a related district court litigation to support its original decision.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s decision denying institution of inter partes review of claims 23, 24, 26, and 33 of the ’492 Patent.  The Board stated that the standard of review of a decision on institution is abuse of discretion, which may be determined by analyzing whether a decision is based on an erroneous interpretation of law, a factual finding is not supported by substantial evidence, or the decision represents an unreasonable judgment in weighing relevant factors.  The Board also stated that the request must specifically identify all matters that the movant believes the Board misapprehended or overlooked. Continue reading

Final Written Decision and Denying Motion to Amend IPR2013-00050

Takeaway: Expert declarations must disclose underlying facts or data on which the opinions are based and should be focused upon issues that are not ancillary to the grounds of unpatentability instituted in a proceeding.  Also, reasons to combine prior art references in support of obviousness may differ from advantages identified by the inventor of the challenged patent.

In its Final Written Decision, the Board held that Petitioner had shown by a preponderance of the evidence that all the challenged claims are unpatentable, denied Patent Owner’s Corrected Motion to Amend Claims, and denied-in-part and dismissed-in-part Patent Owner’s Motion to Exclude Evidence. Continue reading

Final Written Decision IPR2013-00041

Takeaway: The Board was not persuaded by arguments against the combination of references or by objective indicia of nonobviousness, including alleged commercial success and long-felt need.

In its Final Written Decision, the Board found that claims 23 and 25-29 of U.S. Patent No. 5,746,775 (the ’775 Patent) were unpatentable, dismissed Petitioner’s Motion to Exclude and denied Patent Owner’s Motion to Exclude. The ’775 Patent relates to methods of exposing collagenous biomaterial to an alcohol, in order to inhibit in vivo calcification. Continue reading