Final Written Decision Finding All Challenged Claims Unpatentable IPR2014-00233 FWD 20150608

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Takeaway: If a due date that is stipulated by the parties falls on a federal holiday or weekend, the filing must be filed on that date, not on the next business day, in order to be timely.

In its Final Written Decision, the Board found that all of the challenged claims (1, 4-6, 8, 9, 11, 12, 38, 41-44, 46, 47, and 49) of the ’384 Patent are unpatentable. The ’384 Patent proposes to solve problems relating to current flux around tissue treated by electrosurgery and tissue heating. The Board began by construing the claims according to their broadest reasonable interpretation in light of the specification. The Board had provided constructions for various terms of the challenged claims in its Decision on Institution. Petitioner agreed with those constructions, but Patent Owner disagreed with the construction of the term “perforated.” Patent Owner argued that the phrase “to permit the release of steam during use” should be ignored in construing a limitation that includes the word “perforated” because it describes the function of the perforations. The Board disagreed. Patent Owner also argued that “perforations” do not include “passages,” but the Board found that Patent Owner had not explained adequately why a perforation excludes a passage. Continue reading

Termination of Proceedings CBM2014-00072-75

Takeaway: The bar under 35 U.S.C. § 325(a)(1) is a statutory requirement and, thus, cannot be waived.

In its Decision, the Board ordered the termination of the trials in CBM2014-00072, CBM2014-00073, CBM2014-00074, and CBM2014-00075, and vacated its Decisions on Institution in each of these proceedings, because it found that Petitioner had filed a declaratory judgment action that resulted in a bar under 35 U.S.C. § 325(a)(1). Continue reading

Decision on Waiver of Argument and Denying Request for Additional Pages in Reply CBM2013-00033; CBM2013-00034; CBM2013-00035; CBM2013-00044; CBM2013-00046

Takeaway: Failing to object to admissibility of evidence will not waive a counter argument against the underlying fact that was being alleged by the non-objected to evidence. A request for additional pages for a Reply will not be granted absent extraordinary circumstances.

In its Order, the Board addressed three separate issues. First, the Board ordered that Patent Owner did not constitute waiver of its argument that a reference is not a “printed publication.” Second, the Board denied Petitioner’s request for three additional pages for its Reply. Third, the Board denied Patent Owner’s contingent request for leave to file motion to submit supplemental information. Continue reading