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February 24, 2017Newsletter

This Week at the Board - February 24, 2017

PTAB Authorizes Filing of Motion to Terminate Proceedings Under § 315

In IPR2016-00130, the PTAB authorized Patent Owner’s request to file a motion to terminate the proceeding under 35 U.S.C. § 315(e)(1). Section 315(e)(1) states: “The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a) . . . may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” Patent Owner argued that Petitioner was estopped from maintaining the instant inter partes review because the proceeding included grounds that could have reasonably been raised in an earlier proceeding in which the Board had issued a Final Written Decision. Specifically, Patent Owner argued that two exhibits—which Petitioner relied upon as grounds for anticipation and obviousness in the instant proceeding—were in the possession of Petitioner at the time of the earlier proceeding. Petitioner argued that a diligent search was done and the circumstances related to the discovery of other documents and the filing of the present petition were reasonable under § 315. The Board authorized Patent Owner to file a motion to terminate and authorized Petitioner to file an opposition to the motion.

A link to the PTAB’s Order is provided here.

PTAB Grants Request for Rehearing

In IPR2015-00313, the PTAB granted Petitioner’s request for rehearing and modified its Final Written Decision, holding an additional claim of the subject patent unpatentable as anticipated. Petitioner sought rehearing/modification of the Board’s determination that Petitioner failed to demonstrate, by a preponderance of the evidence, that Claim 2 was unpatentable as anticipated by a prior reference. Under 37 C.F.R. § 42.71(d), the burden of showing that a decision should be modified falls upon the challenging party. “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”

Based on Petitioner’s fact-specific arguments, the Board was persuaded that it misapprehended Petitioner’s arguments regarding the appropriate construction of Claim 2 and, therefore, misinterpreted the Claim. Judge Bunting, however, dissented from the majority’s opinion and averred that the majority’s interpretation of Claim 2 was unreasonably broad in light of the claims, specification, evidence of record, and how one of skill in the art would interpret the claim term.

A link to the PTAB’s Decision is provide here.

PTAB Authorizes Patent Owner to File Supplement to Motion to Amend

In IPR2014-00090, the PTAB authorized Patent Owner’s request to file a Supplement to the Motion to Amend to add additional language to a substitute claim. The Board had issued a Final Written Decision in the case and determined that all challenged claims were unpatentable. It also denied Patent Owner’s Motion to Amend. Upon appeal, the Federal Circuit affirmed-in-part, vacated-in-part, and remanded to address the patentability of two substitute claims. During a conference call, the Board and counsels discussed whether one of the substitute claims met the requirements of 35 U.S.C. § 101. The parties also discussed what effect the Board’s decision in Ex parte Mewherter would have on the substitute claim. After a preliminary determination that the substitute claim was unpatentable as currently written, the Board, in the interest of justice, authorized Patent Owner to file a Supplement to add new language.

A link to the PTAB’s Order is provided here.

PTAB Denies Institution of Inter Partes Review

In IPR2016-01490, the PTAB declined to institute inter partes review. The Board determined Petitioner had not shown a reasonable likelihood that it would prevail in showing the subject claims unpatentable. In so declining, the Board exercised its discretion under 35 U.S.C. § 325(d), which states “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board declined to institute trial because the Patent Examiner had repeatedly considered Petitioner’s relied-upon reference, determined that it was the closest prior art to the invention claimed, and expressly allowed the challenged claims over the reference—facts Petitioner failed to disclose in its petition for review. Moreover, Petitioner failed to demonstrate why a person having ordinary skill in the art would read the reference as anticipating the subject claims.

A link to the PTAB’s Decision is provided here.

PTAB Finds Expert Testimony Unpersuasive and Refuses to Consider Additional Rationales Raised for the First Time in Reply Brief

In IPR2016-00046, the PTAB, in its Final Written Decision, held some subject claims were unpatentable under 35 U.S.C. § 103(a), but further determined Petitioner had failed to show by a preponderance of the evidence that other subject claims were unpatentable as obvious. Notably, in reaching its determination, the Board gave “very little weight” to Petitioner’s expert. Petitioner’s expert opinion “merely mimics the language of the Petition.” “[O]bviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Moreover, Petitioner asserted additional rationales to support its argument, however, those rationales were provided for the first time in Petitioner’s Reply and, consequently, exceeded the scope of a proper reply brief.

A link to the PTAB’s Decision is provided here.

PTAB Institutes Review on Dependent Claims Based on Independent Claims

In IPR2016-01454, the PTAB instituted review of all subject claims after determining Petitioner had demonstrated a likelihood of prevailing for the independent claims. The Board relied on 37 C.F.R. § 42.108, which provides “[w]hen instituting inter partes review, the Board may authorize the review to proceed on all or some of the grounds of unpatentability asserted for each claim.” The Board analyzed the two independent claims at issue and, after determining there was a reasonable likelihood of prevailing on those claims, instituted review of all subject claims without undertaking an analysis of each of the dependent claims.

A link to the PTAB’s Decision is provided here.

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