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IPR2022-01291, No. 15 Institution Decision Grant - Institution Decision Grant (P.T.A.B. Feb. 1, 2023)
In light of Patent Owner’s failure to address the relevant considerations and the fact that three of the four asserted references were not previously presented to the Office, the first prong of the Advanced Bionics framework has not been met and no basis has been shown for the exercise of our discretion to deny the Petition.
Patent Owner’s argument fails because the Petition makes clear, in conformance with 37 C.F.R. § 42.104(b)(3) and consistent with the CTPG, that Petitioner contends that the Phillips standard applies and that no claim term requires express construction.
We have considered Patent Owner’s arguments, including that Iwamiya needed no improvement and relies on a contrary principle of operation, and find them to be insufficient on the current record to overcome the rationale shown by Petitioner.
On balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Iwamiya and Sarantos would have rendered the subject matter of claims 1 and 9 of the ’745 patent obvious to one of ordinary skill in the art at the time of the invention.
Patent Owner also argues with regard to claims 15 and 18 that Iwamiya does not disclose photodiodes “in an array having a spatial configuration corresponding to a shape of the portion of the tissue measurement site encircled by the light block.” Prelim. Resp. 21, 42, 47–48.
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IPR2022-01291, No. 15 Institution Decision Grant - Institution Decision Grant (P.T.A.B. Feb. 1, 2023)
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IPR2022-01292, No. 15 Institution Decision Deny - Institution Decision Deny (P.T.A.B. Feb. 1, 2023)
Petitioner concurrently filed another petition in another proceeding requesting inter partes review of the Challenged Claims on different grounds.
For the reasons provided below, and based on the circumstances present here, we find a second petition challenging the same claims of the same patent is not warranted and exercise discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review in this proceeding.
In the ’1291 Petition, Petitioner argues with regard to motivation to combine Venkatraman as follows: A [person of ordinary skill in the art] would have been motivated to transmit information from Iwamiya’s[12] wrist- worn wearable device, which has limited display space and processing power, to a secondary device like a smart phone, as taught by Venkatraman in order to increase the functionality of the system without significantly increasing the power consumption of Iwamiya’s sensor.
Rather than materially differ, as Petitioner asserts, at least with regard to Venkatraman, the purported motivation to combine appears to be substantially the same in both petitions.
Lastly, according to Petitioner, “[d]ue to word count constraints, two petitions were needed to address grounds based on the asserted primary references.” Id. at 5.
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IPR2022-01292, No. 15 Institution Decision Deny - Institution Decision Deny (P.T.A.B. Feb. 1, 2023)
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IPR2022-01466, No. 15 Institution Decision Deny - Institution Decision Deny (P.T.A.B. Feb. 23, 2023)
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IPR2022-01466, No. 15 Institution Decision Deny - Institution Decision Deny (P.T.A.B. Feb. 23, 2023)
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IPR2022-01465, No. 15 Institution Decision Grant - Institution Decision Grant (P.T.A.B. Feb. 6, 2023)
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IPR2022-01465, No. 15 Institution Decision Grant - Institution Decision Grant (P.T.A.B. Feb. 6, 2023)
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IPR2022-01465, No. 16 Order Other - Order Scheduling Order (P.T.A.B. Feb. 6, 2023)
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IPR2022-01465, No. 16 Order Other - Order Scheduling Order (P.T.A.B. Feb. 6, 2023)
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IPR2022-01291, No. 9 Order Other - ORDR Conduct of the Proceeding (P.T.A.B. Sep. 28, 2022)
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IPR2022-01291, No. 9 Order Other - ORDR Conduct of the Proceeding (P.T.A.B. Sep. 28, 2022)
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IPR2022-01291, No. 9 Order Other - ORDR Conduct of the Proceeding (P.T.A.B. Sep. 28, 2022)
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IPR2022-01291, No. 9 Order Other - ORDR Conduct of the Proceeding (P.T.A.B. Sep. 28, 2022)
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IPR2022-01292, No. 9 Order Other - ORDR Conduct of the Proceeding (P.T.A.B. Sep. 28, 2022)
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IPR2022-01292, No. 9 Order Other - ORDR Conduct of the Proceeding (P.T.A.B. Sep. 28, 2022)
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IPR2022-01291, No. 8 Order on Motion - ORDER Granting Patent Owners Unopposed Motion for Pro Hac Vice Admission of Jeremiah S Helm, PhD 37 CFR sec 4210 (P.T.A.B. Sep. 23, 2022)
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IPR2022-01291, No. 8 Order on Motion - ORDER Granting Patent Owners Unopposed Motion for Pro Hac Vice Admission of Jeremiah S Helm, PhD 37 CFR sec 4210 (P.T.A.B. Sep. 23, 2022)
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IPR2022-01292, No. 8 Order on Motion - ORDER Granting Patent Owners Unopposed Motion for Pro Hac Vice Admission of Jeremiah S Helm, PhD 37 CFR sec 4210 (P.T.A.B. Sep. 23, 2022)
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IPR2022-01292, No. 8 Order on Motion - ORDER Granting Patent Owners Unopposed Motion for Pro Hac Vice Admission of Jeremiah S Helm, PhD 37 CFR sec 4210 (P.T.A.B. Sep. 23, 2022)
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IPR2022-01292, No. 8 Order on Motion - ORDER Granting Patent Owners Unopposed Motion for Pro Hac Vice Admission of Jeremiah S Helm, PhD 37 CFR sec 4210 (P.T.A.B. Sep. 23, 2022)
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IPR2022-01292, No. 8 Order on Motion - ORDER Granting Patent Owners Unopposed Motion for Pro Hac Vice Admission of Jeremiah S Helm, PhD 37 CFR sec 4210 (P.T.A.B. Sep. 23, 2022)
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IPR2022-01466, No. 9 Order Other - ORDR Conduct of the Proceeding (P.T.A.B. Sep. 28, 2022)
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IPR2022-01465, No. 9 Order Other - ORDR Conduct of the Proceeding (P.T.A.B. Sep. 28, 2022)
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IPR2022-01465, No. 9 Order Other - ORDR Conduct of the Proceeding (P.T.A.B. Sep. 28, 2022)
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IPR2022-01466, No. 8 Order on Motion - ORDER Granting Patent Owners Unopposed Motion for Pro Hac Vice Admission of Jeremiah S Helm, PhD 37 CFR sec 4210 (P.T.A.B. Sep. 23, 2022)
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IPR2022-01466, No. 8 Order on Motion - ORDER Granting Patent Owners Unopposed Motion for Pro Hac Vice Admission of Jeremiah S Helm, PhD 37 CFR sec 4210 (P.T.A.B. Sep. 23, 2022)
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IPR2022-01465, No. 8 Order on Motion - ORDER Granting Patent Owners Unopposed Motion for Pro Hac Vice Admission of Jeremiah S Helm, PhD 37 CFR sec 4210 (P.T.A.B. Sep. 23, 2022)
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IPR2022-01465, No. 8 Order on Motion - ORDER Granting Patent Owners Unopposed Motion for Pro Hac Vice Admission of Jeremiah S Helm, PhD 37 CFR sec 4210 (P.T.A.B. Sep. 23, 2022)
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