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November 3, 2017Published Article

This Week at the Board - November 3, 2017

Board Rejects Patent Owner’s Argument That Petition Should Be Denied Under 35 U.S.C. §325(d)

Edwards Lifesciences Corporation recently filed a petition requesting an inter partes review of claims 1-26 of U.S. Patent No. 8,709,062, owned by Boston Scientific Scimed, Inc..  The Patent Owner asserted that one of the prior art references had already been presented to the Office during prosecution of the patent, and that another of the references was included in an IDS submitted during prosecution of the patent.  A third prior art reference was not presented to the Office during prosecution of the patent, but the Board agreed with the Patent Owner that this third prior art reference was substantially similar to a reference the Petitioner was relying upon in the petition. The Board, however, declined to deny institution on the basis of 35 U.S.C. §325(d), finding that although the same prior art may have been before the Examiner during prosecution, the petition’s reliance on that prior art and the Examiner’s reliance on that prior art were substantially different.  In particular, the Board found that the Examiner had relied upon the first prior art reference for anticipation, but had not considered that same reference for obviousness purposes. 

A link to the decision is found here.

Board Denies Institution Because Petitioner Failed To Identify All Real Parties In Interest

Radware, Inc. recently filed a petition requesting inter partes review of claims 1-7, 10-12, 14, 15, and 19-26 of U.S. Patent No. 6,311,278, owned by F5 Networks, Inc.  The Patent Owner asserted that the Petitioner had failed to identify all real parties in interest in the petition.  In particular, the Patent Owner asserted that the Petitioner was a wholly-owned subsidiary of Radware, Ltd. in the U.S., and conducted its sales and marketing of Radware, Ltd. products and served as Radware, Ltd.’s authorized representative and agent in the U.S.  Patent Owner asserted that Radware Ltd. could exercise complete control over its subsidiary, and that Radware Ltd. and the Petitioner shared common leadership and financial management.  Petitioner countered by asserting that Radware Ltd. had not controlled the proceedings, and that the Board has repeatedly rejected the argument that a traditional parent / wholly owned subsidiary relationship alone renders a parent a real part in interest, particularly when the parent is a foreign entity and the subsidiary is a U.S. entity.  The Board sided with the Patent Owner, finding that there was sufficient evidence to find that the lines of corporate separate between Radware, Ltd. and Radware, Inc. were blurred, and that the parent company could control conduct of the inter partes review.  In particular, the Board found that Radware, Ltd. engaged in the design, research and development, manufacturing of network management and data-security devices, and sale thereof outside the U.S., while Radware Inc. engaged in sales, marketing, installation, and services of those network management and data-security devices in the U.S.  Additionally, during litigation, Radware, Inc. offered Radware, Ltd. employees as potential witnesses having knowledge of petitioner’s advertising and sales of accused products in the U.S., and revenue derived therefrom.  Additionally, the Board noted that Radware, Ltd.’s co-founder and long-term Chief Executive Officer, President, and Director also served as a Director for Radware, Inc., and that Radware, Inc. and Radware, Ltd. had a history of litigating together and sharing counsel.    

A link to the decision is found here.

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