- Mylan Pharmaceuticals Inc. v. Astrazeneca ABRehearing grantedPTAB · May 2, 2016 · IPR2015-01340 · APJ Rama G Elluru · IPR · Rehearing
The Board granted Mylan’s rehearing request and instituted IPR of claims 1, 2, 4, 6-22, 25-30, 32-37, and 39-42.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. ANALYSIS When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. 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. We grant Petitioner’s request for rehearing and institute an inter partes review of claims 1, 2, 4, 6–22, 25–30, 32–37, and 39–42 of the ’186 patent for the reasons provided in the concurrently issued Decision on Institution. Paper 16.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“References Basis Claims challenged Ashworth I, Villhauer, Raag and, 1, 2, 4, 6–11, 25–28, § 103(a) Hanessian 32–35, 39, and 40 Ashworth I, Villhauer, Raag, 12–16, 29, 30, 36, 37, Hanessian, Bachovchin, and § 103(a) 41, and 42 GLUCOPHAGE Label Ashworth I, Villhauer, Raag, Hanessian, Bachovchin and, § 103(a) 12, 17, 18, and 22 XENICAL Label Ashworth I, Villhauer, Raag, Hanessian, Bachovchin, and § 103(a) 12, 19, 20, and 21” slip op. at 2
None - PTAB · Feb 26, 2016 · IPR2015-01047 · APJ Stephen C Siu · IPR · Rehearing
The Board granted Patent Owner limited additional discovery about Ward Dietrich’s involvement in preparing or controlling the Petition and denied discovery of other requested materials.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“We have considered Patent Owner’s arguments in the Request but, with the exception noted below, find them unpersuasive to demonstrate that we misapprehended or overlooked any points. For example, we disagree with Patent Owner that “[t]he Motion certainly met this standard [of showing beyond speculation that something useful would be uncovered as to RPI issues]” for at least the reasons previously detailed in the Decision. See Decision 1–5. However, Patent Owner argues that “Ward Dietrich is Chief Operating Officer of the Mangrove Partners Master Fund” and “has no public role in petitioner” (Motion 3 (citing Ex. 2002 at 2)) and that “Ward Dietrich held himself out as an ‘authorized person’ to sign the Power of Attorney on behalf of Petitioner” (Req. Reh’g 6 (quoting Motion 3)). Petitioner does not appear to refute this contention. Patent Owner further requests “[c]ommunications and documents or things . . . including assistance with identification of prior art, filing, funding, compensation, and/or preparation of any papers related to the Mangrove IPRs” and the identification of “persons and entities . . . involved in the preparation and filing of the petitions” and “persons and entities . . . who controlled or had the ability to control the preparation and filing of the petitions in the Mangrove IPRs.” Ex. 2034, 3; Ex. 2035, 3. In view of Ward Dietrich’s alleged role as an officer of Mangrove Partners and the named Petitioner, we grant Patent Owner’s motion for additional discovery for the limited purpose of providing communications and/or agreements pertaining to Ward Dietrich’s involvement in the preparation and filing of the Petition and/or control or ability to control the preparation and filing of the Petition.” slip op. at 2
- Additional discoveryAdditional discovery, grantedAdditional discovery, deniedGranted in part
“However, Patent Owner argues that “Ward Dietrich is Chief Operating Officer of the Mangrove Partners Master Fund” and “has no public role in petitioner” (Motion 3 (citing Ex. 2002 at 2)) and that “Ward Dietrich held himself out as an ‘authorized person’ to sign the Power of Attorney on behalf of Petitioner” (Req. Reh’g 6 (quoting Motion 3)). Petitioner does not appear to refute this contention. Patent Owner further requests “[c]ommunications and documents or things . . . including assistance with identification of prior art, filing, funding, compensation, and/or preparation of any papers related to the Mangrove IPRs” and the identification of “persons and entities . . . involved in the preparation and filing of the petitions” and “persons and entities . . . who controlled or had the ability to control the preparation and filing of the petitions in the Mangrove IPRs.” Ex. 2034, 3; Ex. 2035, 3. In view of Ward Dietrich’s alleged role as an officer of Mangrove Partners and the named Petitioner, we grant Patent Owner’s motion for additional discovery for the limited purpose of providing communications and/or agreements pertaining to Ward Dietrich’s involvement in the preparation and filing of the Petition and/or control or ability to control the preparation and filing of the Petition.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Patent Owner requests an “expanded panel that includes the Chief Judge” because, according to Patent Owner, an expanded panel “is necessary to secure and maintain uniformity” and to “clarify the standard for additional discovery.” Req. Reh’g 1–2, 8–9. Discretion to expand a panel rests with the Chief Judge, who, on behalf of the Director, may act to expand a panel on a suggestion from a judge or panel. AOL Inc. v. Coho Sicensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015)(Paper 12)(informative). Patent Owner’s suggestion was considered by the Acting Chief Administrative Patent Judge, who declined to expand the panel.” slip op. at 3
NonePatents in suitUS 7,490,151 - Avx Corporation v. Greatbatch Ltd.Rehearing grantedPTAB · Jan 13, 2016 · IPR2015-00710 · APJ Jon B Tornquist · IPR · Rehearing
The Board granted rehearing in part and instituted review of claims 1, 2, 5–7, 10, 11, 16, 17, and 20 on anticipation and obviousness grounds; it denied rehearing on the remaining claims.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“When the Petition and Dr. Irazoqui’s testimony are considered in view of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45). Accordingly, for the reasons discussed below, we grant-in-part and deny-in-part Petitioner’s Request for Rehearing and institute inter partes review on the grounds set forth below.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“7. Conclusion Based on the foregoing, we are persuaded that Petitioner has demonstrated a reasonable likelihood that claims 1, 2, 5–7, 10, 11, 16, 17, and 20 of the ’553 patent are anticipated by Fraley; we are not persuaded that claims 3, 4, 8, 9, 12–15, 18, and 19 of the ’553 patent are anticipated by Fraley.” slip op. at 12
- BurdenMixed
“of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are not persuaded by Patent Owner’s argument because Exhibit 2008, relied upon by Patent Owner to support its argument, instructs that “[a] braze fillet should ideally be very small.” Ex. 2008, 1; see also id. at 2 (“Keep the fillet small. Remember, all the good things about a braze joint are happening INSIDE the joint, not in the outside fillets.”). Thus, on this record, regardless of any variation in the size of the braze-fillet, Patent Owner’s evidence and attorney argument do not demonstrate that the space between insulator 122 and washer 124 would be “substantial.” Based on the foregoing, and upon review of Petitioner’s and Patent Owner’s arguments, the evidence of record, and the supporting testimony of Dr. Irazoqui, we are persuaded that Petitioner demonstrates a reasonable likelihood that claims 1 and 16 of the ’553 patent are anticipated by Fraley.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,327,553 - Target Corporation v. Destination Maternity CorporationRehearing grantedPTAB · Feb 12, 2015 · IPR2014-00509 · APJ Lora M Green · IPR · Rehearing
The Board granted Target’s request for rehearing of the denial of institution, for the reasons given in the related IPR2014-00508 decision.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“our Decision Denying Joinder of the instant proceeding with IPR2013-00533 (Paper 18), as well as our Decision Denying Institution of Inter Partes Review (Paper 19). Paper 20 (“Request for Rehearing”). Patent Owner, Destination Maternity Corporation, was authorized to file an Opposition (Paper 22), to which Petitioner was authorized to file a Reply (Paper 23). For the reasons discussed in the Decision Granting Petitioner’s Request for Rehearing in related IPR2014-00508 (Paper 28), we grant the Request for Rehearing.” slip op. at 2
None
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