Institution may occur when a preliminary response fails to address each of the asserted grounds for combining cited references, IPR2014-01544

Patent Owner's Preliminary Response did not adddress each of the multiple grounds for combining cited references asserted in the petition.

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Takeaway: The Board may institute inter partes review when a petition asserts multiple grounds for combining cited references, and patent owner’s preliminary response only takes issue with some, but not all, of the asserted motivations.

In its Decision, the Board instituted inter partes review of claims 1-39 of the ‘147 patent. The basis for the Board’s institution was the potential obviousness of these claims under 35 U.S.C. § 103 in view of the CRD Manual and the HP Journal. The Board gave consideration to the Declaration of Petitioners’ expert Dr. Andrew Hospodor in conducting its analysis.
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