February 2, 2018Newsletter

This Week at the Board - February 2, 2018

Board Exercises Discretion Under 37 C.F.R. §42.108(a) To Deny Institution Of IPR 

In IPR2017-01804, the Board recently exercised its discretion under 37 C.F.R. §42.108(a) to deny institution.  The Board noted that it often institutes an IPR if a petition is substantively identical to another petition that was already granted institution, so long as the petitioner requests joinder.  In this case, however, the petitioner did not request joinder.  Rather, the petitioner noted that it would request joinder “when appropriate.”  The Board was not satisfied with this language, noting that if it were to institute trial, the Patent Owner would be required to participate in duplicative proceedings until such time (if ever) when the petitioner requested joinder.  Additionally, the Board noted that even if the petitioner were to immediately file a request for joinder, there would be insufficient time for briefing to be completed before entry of a decision of institution.  Thus, the Board instead denied institution, but did so without prejudice, allowing the petitioner the opportunity to file a new petition accompanied by a request for joinder.     

A link to the decision is found here.


Board Denies Request For Supplemental Information 

In IPR2017-01541, the Board recently denied a petitioner’s request to submit supplemental information.  The petitioner made the request in an attempt to submit additional information related to the level of ordinary skill in the art.  The Board, however, found that the petitioner had not sufficiently persuaded the Board why the supplemental information could not have been filed with the petition, or why granted such a motion would be more than an opportunity to supplement the petition after initial comments or arguments had been provided by the patent owner.  Rather, the Board found that the petitioner had taken a “wait-and-see” approach before requesting to file the additional information.  For this reason, the Board denied the request.     

A link to the order is found here.


Board Denies Request For Rehearing Of Termination Decision

In IPR 2016-00497, the Board recently denied the petitioner's request for rehearing of an earlier decision to terminate an IPR proceeding under 35 U.S.C. § 315(b), which prohibits institution of an IPR filed more than a year after institution of litigation.  The petitioner met the initial burden of asserting that they were not barred or estopped from requesting an IPR in the petition.  The patent owner did not prove in the preliminary response that the petition was time-barred, but augmented the response after institution of the trial with additional evidence.  The petitioner took no steps to address the additional evidence and arguments.  The Board found that the “Termination Decision is properly understood as concluding that (1) Patent Owner satisfied the shifted burden of production on the privity issue, and (2) Petitioner failed to satisfy that burden when shifted back to Petitioner and thereby failed to satisfy its ultimate burden of persuasion."

A link to the decision is found here.


Board Denies PGR Institution Based On Arguments Previously Presented In Prosecution

In PGR2017-00038, the Board recently denied institution of a post grant review under 35 U.S.C. § 325(d) because it found that the petitioner’s arguments were already addressed in prosecution of a related patent.  The Board considered the basis of the petitioner’s arguments to be that the claims of U.S. Patent No. 9,466,035  are ineligible because they are similar to claims affirmed as patent-ineligible by the Fed. Circuit [FairWarning IP, LLC, vs. Iatric Systems, Inc., 839 F.3d 1089 (Fed. Cir. 2016)].  This argument was presented to the Examiner in a third party submission during prosecution of U.S. Patent No. 9,639,811, a continuation of the ’035 patent.  The Examiner rejected those arguments in a detailed analysis, and the petitioner did not identify any material differences between the claims of the ’811 patent and the challenged ’035 patent. 

A link to the decision is found here.

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