In its Decision, the Board denied the Petition to Institute an Inter Partes Review stating that it determined that the record does not demonstrate that there is a reasonable likelihood that Petitioners would prevail with respect to at least one challenged claim of the ’992 Patent. Petitioners argued that the ’992 Patent should not get the benefit of an earlier international application because the international application fails to support the challenged claims with adequate written description. However, in the sister IPR filed by Petitioners challenging the same claims, Petitioners made an inconsistent argument stating that the international application discloses each and every element of the challenged claims. The Board emphasized this inconsistency, and stated that it was also persuaded by Patent Owner’s argument that the international application does support the challenged claims. The Board then turned to Petitioners’ obviousness arguments and found that each one included a publication that was not prior art given the earlier priority date. One of the publications was dated “1996” with no month or date, and the Board stated that Petitioner had not shown that the publication was accessible to the public prior to the August 30, 1996 priority filing date. Therefore, the Board could not find that it was prior art.
Baxter Healthcare Corp., Apatech, Inc., and Apatech Ltd. v. Millenium Biologix, LLC, IPR2013-00591
Paper 8: Decision Denying Institution of Inter Partes Review
Dated: March 21, 2014
Patent 6,585,992
Before: Michelle R. Osinski, Scott E. Kamholtz, and Brian P. Murphy
Written by: Osinski
Related Proceedings: IPR2013-00590; Millenium Biologix, LLC v. Baxter Healthcare Corp., No. 1:13-cv-03084 (N.D. Ill.)