Granting Request to Expunge Motion for Observation IPR2015-00325

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Takeaway: If a patent owner is granted authorization to file a surreply on a particular issue after cross-examination of a reply witness, the patent owner cannot also file observations on the cross-examination of the reply witness directed to the same issue.

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

Final Written Decision Finding All Challenged Claims Unpatentable IPR2014-00652

Takeaway: Patent Owner must provide specific evidence regarding the nexus between the claimed features and the proffered secondary indicia for such indicia to be found persuasive.

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

Takeaway: In light of Director Lee’s Posting announcing upcoming changes to PTAB rules, the Board may permit petitioners 25 pages, instead of 15, to reply to a patent owner’s Response.

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

Takeaway: The Board allowed Patent Owner to use a portion of its Reply to the Opposition to the Motion to Amend to address arguments made by Petitioner in its Reply to the Patent Owner Response regarding swearing behind of one of the references, because the argument applies to both the Motion to Amend and the original claims.

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

Takeaway: Consistent with 37 C.F.R. § 42.53, testimony generally may be taken at any reasonable time and location within the United States.

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

Takeaway: While it may be reasonably established that the broadest reasonable interpretation claim construction standard does not apply to patents that expire prior to a final written decision, the Board may still entertain argument that the standard still applies to expiring patents.

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

Takeaway: The Board may grant a request to file a motion for additional discovery when the facts present more than a mere possibility that the requested discovery will uncover something useful, even if there is ongoing discovery into the same issue in a different proceeding.

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

Takeaway: Although generally a Petitioner’s Reply may not present new arguments, Petitioner’s Reply may appropriately include arguments that are responsive to positions taken in the Patent Owner Response.

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