In its Order, the Board granted Petitioner’s request for Patent Owner’s Motion for Observation to be expunged. The Board noted that “the purpose of a motion for observation is to provide a party a mechanism to draw the Board’s attention to relevant cross-examination testimony of a reply witness because no further substantive paper is permitted after the reply by the party.” In this case, the Board granted Patent Owner’s “request for authorization to file a surreply with respect to the issue of antedating the asserted prior art reference patents involved in the grounds of unpatentability on which trial has been instituted.” The surreply could be filed with sufficient time after cross-examining Petitioner’s Reply witness. Accordingly, the surreply, which was Patent Owner’s last substantive paper, was filed after the cross-examination. Accordingly, it was improper to file observations on the cross-examination directed to the issue discussed in the surreply, when the surreply was filed after the cross-examination. The Board noted that Patent Owner could have filed observations on the cross-examination directed to issues other than what was authorized to be discussed in the surreply, but that was not the case in this proceeding. Continue reading
Category Archives: Motion for Observation
Final Written Decision Determining that Reference Supported Finding of Reasonable Expectation of Success IPR2014-00834
Final Written Decision Finding All Challenged Claims Unpatentable IPR2014-00652
In its Final Written Decision, the Board concluded that Petitioner has shown by a preponderance of the evidence that claims 1, 3-5, and 10-13 of the ’340 patent are unpatentable. The Board stated that the ’340 patent relates “to drugs formulated as unit oral dosage forms by incorporating them into matrices formed of a combination of poly(ethylene oxide) (“PEO”) and hydroxypropyl methylcellulose (“HPMC”). Continue reading
Decision Granting Petitioner Page Extension IPR2014-00781
In its Decision, the Board granted Petitioner’s request for an additional ten pages for its Reply to Patent Owner’s Response.
The Board noted that Petitioner’s request is consistent with USPTO Director Lee’s Posting on March 27, 2015. Continue reading
Decision Regarding Request for Sur-Reply IPR2013-00578
In its Order, the Board summarized a call regarding Patent Owner’s request for a sur-reply brief regarding the issue of the date of invention of one of the references relied on in the Petition. With its Patent Owner Response, Patent Owner included a declaration from the inventor of the ’804 Patent, “swearing behind” one of the references relied on in the Petition. Continue reading
Authorizing Sur-Reply and Motion for Observation of Cross-Examination IPR2013-00580
In its Order, the Board authorized Patent Owner to file a sur-reply to Petitioner’s Reply to Patent Owner Response, but did not authorize Petitioner to file any response to the sur-reply. Also, the Board authorized Patent Owner to file a motion for observations on cross-examination of Mr. Lance Rake, and Petitioner was authorized to file responses to the observations. Continue reading
Order Requiring Additional Briefing on Claim Construction Standard and Patent Expiration IPR2014-00247
In its Order, the Board summarized the initial conference call and ordered that Due Date 1 be moved and that each party file a paper setting forth its position regarding the expiration date of the ’879 patent and the proper claim construction standard. Continue reading
Granting Leave to File Revised Motion for Observations IPR2013-00323
Takeaway: A motion for observations is typically limited to 15 pages, and should include a single short paragraph for each observation with an explanation of relevance that is not elaborate or argumentative.
In its Order, the Board authorized Patent Owner to file a revised motion for observations on cross-examination of Petitioner’s Reply declarant. Petitioner did not oppose this authorization. At the same time, the Board authorized Petitioner to file a response to Patent Owner’s motion for observations. Continue reading
Order Regarding Joinder, Additional Discovery, and Observations on Cross-Examination IPR2014-00199
In its Order, the Board addressed several issues: (i) it denied Petitioner’s request to file a motion to join another inter partes review (IPR2014-00920) to the current proceedings; (ii) it granted Patent Owner’s request for authorization to file a motion for additional discovery regarding potential real-parties-in-interest; (iii) it provided guidance for Patent Owner’s anticipated motion to amend claims; (iv) it invited Patent Owner to seek authorization to file a motion for observations on cross-examination when that authorization would be timely; and (v) it reminded both parties of the rules governing motions to exclude. Continue reading
Order Authorizing Motion for Observations and Denying Motion to Strike IPR2013-00323
In its Order, the Board authorized Patent Owner to file a motion for observations on cross-examination of Petitioner’s reply declarant. Petitioner did not oppose this authorization. At the same time, the Board authorized Petitioner to file a response to Patent Owner’s motion for observations.
Also, the Board denied Patent Owner’s request to file a motion to strike Petitioner’s Reply. In this connection, Patent Owner provided three assertions in support of Patent Owner’s position that Petitioner’s Reply presented new arguments and, therefore, exceeded the proper scope of a reply. Continue reading