In its Order, the Board denied the parties’ stipulated motion to extend time for Patent Owner’s preliminary response to the Petition. Patent Owner had emailed the Board on behalf of both parties “seeking a two-month extension of the filing deadline for Patent Owner’s preliminary response, in light of ongoing settlement negotiations.” The parties further agreed “to expedite the proceedings if inter partes review is instituted.” Continue reading
Category Archives: Scheduling Order
Motion to Modify Scheduling Order Denied-In-Part IPR2015-01557
Final Written Decision Finding All Challenged Claims Unpatentable IPR2014-00233 FWD 20150608
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
Denying Leave to File Motion to Compel Routine Discovery CBM2014-00190, 192, 193, 194, 199
In its Order, the Board refrained from authorizing Patent Owner to file a motion to compel routine discovery. The Board also indicated that Patent Owner was not authorized to file a motion to stay any of the referenced proceedings, or a motion to change or extend the due dates in the existing Scheduling Orders. Continue reading
Initial Conference Summary and Motion to Submit Supplemental Information IPR2014-00561
In its Order, the Board authorized Petitioner to file a motion to submit supplemental information. As ordered by the Board, the motion must not exceed 5 pages in length, and the supplemental information that Petitioner seeks to have entered should be filed as an exhibit to the motion. The Board also authorized Patent Owner to file an opposition to Petitioner’s motion, with the opposition being limited to 5 pages as well. Continue reading
Order Vacating Due Dates IPR2014-00369
In its Order, the Board vacated Due Dates 2-7 of the Scheduling Order and determined that the case is ready for final decision following notice by Patent Owner’s counsel that Patent Owner assigned the challenged patent to a third party and would take no further action in the case, unless required by the Board. Continue reading
Denying Motion for Time Extension CBM2013-00056
In its Order, the Board denied-in-part and dismissed-in-part the parties’ Joint Motion to Modify Schedule. The parties requested to modify Due Dates 3-7 in the Revised Scheduling Order by six months to one year in view of a merger agreement between the parties that should close sometime in 2015 after FTC approval. The parties also requested an extension of time to complete the trial under 35 U.S.C. § 326(a)(11). The Board issued an Order requiring additional information from the parties, and a Response was submitted. In the Response, the parties stated that the FTC extended its initial waiting period for at least six month, pushing the closure of the merger for at least six months. Additionally, if the FTC does not approve the merger, then the FTC may file a lawsuit to keep the merger agreement from closing. Therefore, the parties may need an extension of multiple years. Continue reading
Granting Motion for Leave to File Motion for Extension of Time IPR2014-00148
In its Order, the Board authorized Patent Owner to file a motion to deem the late filing of the Patent Owner Response as timely. The parties had previously stipulated that the Patent Owner’s Response was due by August 18, 2014, and Patent Owner submitted the Response on August 19, 2104. The parties therefore sought guidance on addressing the timeliness of the Response. Continue reading
Granting Leave to File Motion for Additional Discovery and Denying Motion for Extension of Time IPR2014-00245
In its Order, the Board granted Patent Owner’s Motion for Leave to File a Motion for Additional Discovery and denied Patent Owner’s Motion for Extension of Time of the Trial Schedule. 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