`Sent:
`To:
`Cc:
`
`Subject:
`Attachments:
`
`Thomas Lewry <tlewry@brookskushman.com>
`Friday, November 8, 2019 11:03 AM
`Precedential_Opinion_Panel_Request
`IPRnotices@sidley.com; jkushan@sidley.com; clfukuda@sidley.com;
`tbroughan@sidley.com; OMSC0112IPR2@brookskushman.com
`IPR2019-00914: Request for Precedential Opinion Panel Review
`REQ for rehearing & POP - 286.PDF
`
`Dear Precedential Opinion Panel:
`Patent Owner in IPR2019-00914 recommends review by the Precedential Opinion Panel of the attached
`rehearing request, filed today.
`Based on my professional judgment, I believe this case requires an answer to the following precedent-setting
`question of exceptional importance:
` When the obviousness combinations asserted in the district court substantially overlap the
`combinations asserted in the IPR, and estoppel would not apply to the district court combinations,
`should the Board exercise its discretion to deny institution to avoid duplicative analysis and promote
`efficiency?
`
`The POP may be convened to address issues of exceptional importance regarding statutes or issues of broad
`applicability to the Board. PTAB Standard Operating Procedure 2, Rev. 10 at Section II(A).
`The question above is appropriate for POP review because it focuses on the factors the PTAB should consider
`when exercising its discretion to deny institution of an IPR for efficiency reasons. To Patent Owner’s
`knowledge, the question has never before been addressed and a precedential resolution would be important to
`helping the public and the Board know (1) what factors should be considered to determine whether an IPR is
`inefficient, and (2) how the factors should be weighed.
`It makes no sense to institute an IPR where, if the patentability of any claim is confirmed by the PTAB, most of
`Petitioner’s prior art invalidity arguments will remain in the litigation after the IPR ends.
`/s/ Thomas A. Lewry
`Attorney of Record for Patent Owner, Omni MedSci, Inc.
`
`Thomas A. Lewry
`Shareholder | Chair Emeritus ‐ Litigation
`
`1000 Town Center, 22nd Floor | Southfield, MI 48075
`Direct: (248) 226‐2753 | Main: (248) 358‐4400
`tlewry@brooks.law | www.BrooksKushman.com | www.BKpostgrant.com
`
`IMPORTANT/CONFIDENTIAL: This message may be privileged, confidential, or exempt from disclosure under applicable
`law. If you have received this communication in error, please notify us immediately by return e‐mail.
`
`1
`
`IPR2019-00916
`Ex. 3001
`
`