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November 15, 2017Newsletter

This Week at the Board - November 10, 2017

Board Grants Rehearing Request In IPR Based On Missed Email

The Board recently granted a rehearing request in an IPR, agreeing with the Patent Owner that the panel had overlooked Patent Owner’s post-hearing email request for additional briefing and evidence. The Board withdrew the Final Written Decision, and granted Patent Owner the opportunity to file a sur-reply not to exceed seven pages to respond to what Patent Owner contended were new theories of patentability by Petitioner.   

A link to the decision is found here.

Board Grants Rehearing Request In IPR Based On Incorrect Claim Construction

The Board recently granted a rehearing request for an IPR institution decision, agreeing with the Petitioner that a claim limitation was construed incorrectly, and that the IPR should be instituted. The Board noted that upon reconsideration of the current record the limitation at question (i.e., “in the absence of an anthracycline derivative”) was in fact a negative limitation as the Petitioner argued, and that “because Baselga ’94 suggests a therapeutic composition consisting of an anti-ErbB2 antibody and paclitaxel, and does not suggest that doxorubicin must necessarily be included as part of the same treatment regimen, we are persuaded that the reference satisfies the limitation ‘in the absence of an anthracycline derivative.’”  The Board further acknowledged that Patent Owner had presented evidence of secondary considerations, but noted that the best course of action would be to permit the parties to “fully develop the record during trial before further weighing the alleged evidence.”   

A link to the decision is found here.

Board Denies Institution Based On Petitioner’s Failure To Construe Claim Limitation

The Board recently denied institution of an IPR because the Board found that the Petitioner had failed to provide sufficient information for a determination of the scope of a claim limitation.  The Board noted that the Petitioner did not point to any part of the specification that revealed a definite frame of reference explaining the relationship between the claimed “substantially not flat” forward wall and the hypothetical “substantially flat wall” and that a claim cannot be both indefinite and anticipated.  Thus, the Board was unable to conclude that there was a likelihood that the Petitioner would prevail in its challenges.       

A link to the decision is found here.

Board Grants Institution Of IPR Despite Art And Arguments Being Similar To Those Raised During Examination

The Board recently granted institution of an IPR, despite the fact that the art and arguments raised by the Petitioner were substantially similar to the art and arguments that were before the Examiner during prosecution.  The Board noted that while the art and arguments were substantially similar, “it is also true that substantially the same arguments and art were raised in Case IPR2014-00727, and many of the challenged claims of the ’838 patent were held unpatentable.”  For this reason, the Board declined to invoke §325(d).         

A link to the decision is found here.

Board Denies Institution Of IPR Because Petitioner Failed To Properly Address Means Claims

The Board recently denied institution of an IPR because the Petitioner failed to adequately point out the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.  The Petitioner had submitted a letter suggesting that the parties had already agreed during a co-pending litigation which terms invoked 35 U.S.C. §112, 6th paragraph and which terms did not.  The Board, however, did not find this letter sufficient, as it merely included attorney argument, and did not properly identify the corresponding structures and functions.  The Board noted that it was impossible to carry out an obviousness determination without knowing the proper scope of the claims.  Thus, the Board denied institution of the IPR.         

A link to the decision is found here.

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