Trials@uspto.gov
`571.272.7822
`
`
`
`
` Paper No. 13
` Entered: December 3, 2018
`
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`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`BAYER INTELLECTUAL PROPERTY GMBH,
`Patent Owner.
`____________
`
`Case IPR2018-01143
`Patent 9,539,218 B2
`____________
`
`
`Before JACQUELINE WRIGHT BONILLA, Acting Deputy Chief
`Administrative Patent Judge, RAMA G. ELLURU and
`TINA E. HULSE, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`

`

`IPR2018-01143
`Patent 9,539,218 B2
`
`
`I. INTRODUCTION
`Mylan Pharmaceuticals Inc. (“Petitioner”) filed a Petition requesting
`an inter partes review of claims 1–4 of U.S. Patent No. 9,539,218 B2
`(Ex. 1001, “the ’218 patent”). Paper 2 (“Pet.”). Bayer Intellectual Property
`GmbH (“Patent Owner”) filed a Preliminary Response to the Petition.
`Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner filed a Reply
`to the Preliminary Response (Paper 8, “Reply”), and Patent Owner filed a
`Surreply (Paper 10 (confidential version); Paper 11 (public version)
`(“Surreply”)).
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering
`the arguments and evidence, we determine that it is appropriate to exercise
`our discretion to deny institution under 35 U.S.C. §§ 314(a) and 325(d).
`Accordingly, we decline to institute an inter partes review of the challenged
`claims of the ’218 patent.
`Related Proceedings
`A.
`Patent Owner has asserted the ’218 patent against Petitioner in a
`pending lawsuit styled Bayer Intellectual Property GmbH v. Mylan
`Pharmaceuticals Inc., No. 1:17-cv-00584-RGA (D. Del.). Pet. 14; Paper 5,
`2. Patent Owner identifies nine other pending cases involving the ’218
`patent in the U.S. District Court of Delaware, which, along with the above-
`referenced case, have been consolidated into the case Bayer Intellectual
`Property GmbH v. Taro Pharmaceutical Industries Ltd., 1:17-cv-462-RGA
`(D. Del.). Paper 5, 2–3.
`
`1
`
`

`

`IPR2018-01143
`Patent 9,539,218 B2
`
`The ’218 Patent
`B.
`The ’218 patent relates to a method of treating a thromboembolic
`disorder by administering a direct factor Xa inhibitor once daily.
`Ex. 1001, 1:4–7. Factor Xa plays a key role in the blood coagulation
`cascade. Id. at 1:25–26. A preferred embodiment of the invention relates
`to 5-Chloro-N-({(5S)-2-oxo-3-[4-(3-oxo-4-morpholinyl)phenyl]-1,3-
`oxazolidin-5-yl}methyl)-2-thiophenecarboxamide, which is referred to as
`rivaroxaban by the parties. Id. at 3:18–21. Rivaroxaban is a low
`molecular weight, orally administrable direct inhibitor of factor Xa. Id. at
`3:21–22.
`
`Illustrative Claim
`C.
`Petitioner challenges claims 1–4 of the ’218 patent, of which claim 1
`is the only independent claim. Claim 1 is illustrative and is reproduced
`below:
`
`1. A method of treating a thromboembolic disorder
`comprising:
`administering a direct factor Xa inhibitor that is 5-Chloro-N-
`({(5S)-2-oxo-3-[4-(3-oxo-4-morpholinyl)phenyl]-1,3-
`oxazolidin-5-yl}methyl)-2-thiophenecarboxamide no
`more than once daily for at least five consecutive days in
`a rapid-release tablet to a patient in need thereof, wherein
`the thromboembolic disorder is selected from the group
`consisting of pulmonary embolisms, deep vein
`thromboses, and stroke.
`Ex. 1001, 10:63–11:5.
`
`2
`
`

`

`IPR2018-01143
`Patent 9,539,218 B2
`The Asserted Grounds of Unpatentability
`D.
`Petitioner challenges the patentability of claims 1–4 of the ’218 patent
`on the following grounds:
`References
`’610 Publication1 and Kubitza Abstracts2
`
`’610 Publication, Kubitza Abstracts, and Forsman3
`
`
`Petitioner also relies on the Declarations of Leslie Z. Benet, Ph.D.
`(Ex. 1002) and Neil E. Doherty, III, M.D., FACC (Ex. 1003) to support its
`assertions.
`
`II. ANALYSIS
`Person of Ordinary Skill in the Art
`A.
`Petitioner asserts that a person of ordinary skill in the art would have
`had an advanced degree in pharmacology, drug design and formulation,
`
`
`1 Straub et al., US 2003/0153610 A1, published Aug. 14, 2003 (“the ’610
`Publication,” Ex. 1005).
`2 Kubitza et al., Multiple Dose Escalation Study Investigating the
`Pharmacodynamics, Safety, and Pharmacokinetics of BAY 59-7939 an Oral
`Direct Factor Xa Inhibitor in Healthy Male Subjects, 102 BLOOD 811a,
`Abstract # 3004 (Nov. 16, 2003) (“Kubitza # 3004”); Kubitza et al., Single
`Dose Escalation Study Investigating the Pharmacodynamics, Safety, and
`Pharmacokinetics of BAY 59-7939 an Oral, Direct Factor Xa Inhibitor in
`Healthy Male Subjects, 102 BLOOD 813a, Abstract # 3010 (Nov. 16, 2003)
`(“Kubitza # 3010”); Harder et al., Effects of BAY 59-7939, an Oral, Direct
`Factor Xa Inhibitor, on Thrombin Generation in Healthy Volunteers, 102
`BLOOD 811a, Abstract # 3003 (Nov. 16, 2003) (“Kubitza # 3003”). Kubitza
`# 3004, # 3010, and # 3003 are collectively referred to by Petitioner as the
`“Kubitza Abstracts.” Ex. 1006.
`3 Forsman et al., WO 00/13671, published Mar. 16, 2000 (“Forsman,”
`Ex. 1007).
`
`3
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`

`

`IPR2018-01143
`Patent 9,539,218 B2
`medicinal chemistry, or a related field. Pet. 11–12. Petitioner also asserts
`that a person of ordinary skill in the art would have had some combination
`of skill and experience, including experience in pharmacology,
`pharmacokinetics, toxicology, and formulation, and an understanding of the
`role of anticoagulants in treating thromboembolic disorders. Id. at 11 (citing
`Ex. 1002 ¶¶ 42–43; Ex. 1003 ¶ 19). Patent Owner does not contest
`Petitioner’s assertions in this regard. Prelim. Resp. 4.
`On this record, we adopt Petitioner’s definition of the level of
`ordinary skill in the art. We also note that the prior art itself demonstrates
`the level of skill in the art at the time of the invention. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific
`findings regarding ordinary skill level are not required “where the prior art
`itself reflects an appropriate level and a need for testimony is not shown”)
`(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
`163 (Fed. Cir. 1985)).
`
`Claim Construction
`B.
`In an inter partes review petition filed before November 13, 2018, the
`Board interprets claim terms in an unexpired patent according to the
`broadest reasonable construction in light of the specification of the patent in
`which they appear. 37 C.F.R. § 100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2142 (2016) (affirming applicability of broadest reasonable
`construction standard to inter partes review proceedings); 83 Fed. Reg.
`51,340 (Oct. 11, 2018) (changing the standard for interpreting claims in inter
`partes reviews filed on or after November 13, 2018). Under that standard,
`and absent any special definitions, we generally give claim terms their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art at the time of the invention. See In re Translogic Tech., Inc.,
`
`4
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`

`

`IPR2018-01143
`Patent 9,539,218 B2
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim
`terms must be set forth with reasonable clarity, deliberateness, and precision.
`See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`The parties contest the meaning of “rapid-release tablet,” which
`appears in claim 1 of the ’218 patent. Petitioner asserts that the ordinary and
`customary meaning of “rapid-release tablet” is a “conventional tablet[] that
`[has] not been formulated to release the active compound in a modified
`manner, such as through delayed or extended release.” Pet. 22 (citing Ex.
`1002 ¶¶ 46, 49; Ex. 1003 ¶¶ 28–30). Patent Owner asserts that the term
`should be construed according to its express definition in the ’218
`specification: “a tablet which, according to the USP release method using
`apparatus 2 (paddle), has a Q value (30 minutes) of 75%.” Prelim. Resp. 5
`(citing Ex. 1001, 8:21–24). Patent Owner further notes that the Board in a
`previous ex parte appeal decision (Ex. 1004, 116) and the district court
`judge in the copending case (Ex. 2002, 1) have both construed the term
`according to Patent Owner’s proposed definition. Prelim. Resp. 6–9.
`Having considered the parties’ respective arguments and evidence, we
`determine Patent Owner’s proposed interpretation is the broadest reasonable
`interpretation. We find—as the prior panel at the Board and the district
`court judge have found—that the ’218 patent specification expressly defines
`the term “rapid-release tablet.” Specifically, the ’218 patent specification
`states:
`
`The term “oral dosage forms” is used in a general sense to
`reference pharmaceutical products administered orally. Oral
`dosage forms are recognized by those skilled in the art to include
`such forms as liquid formulations, granules, gelcaps, hard gelatin
`capsules or sachets filled with granules, and tablets releasing the
`active compound rapidly or in a modified manner.
`
`5
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`

`

`IPR2018-01143
`Patent 9,539,218 B2
`Tablets are preferred, in particular tablets rapidly releasing
`the active compound. In the context of the present invention,
`rapid-release tablets are in particular those which, according to
`the USP release method using apparatus 2 (paddle), have a Q
`value (30 minute) of 75%.
`Ex. 1001, 8:12–24 (emphasis added). Thus, the specification sets forth with
`reasonable clarity and deliberateness the definition of “rapid-release tablets”
`as being “in particular those [tablets] which, according to the USP release
`method using apparatus 2 (paddle), have a Q value (30 minute) of 75%.” Id.
`at 8:22–24.
`Petitioner does not identify any evidence that persuades us to deviate
`from the prior Board decision, the district court’s decision, and, most
`importantly, the ’218 patent specification. For example, as support,
`Petitioner quotes the following passage from the specification, arguing that
`the specification uses the term in its customary manner:
`Oral dosage forms are recognized by those skilled in the art to
`include . . . tablets releasing the active compound rapidly or in a
`modified manner. Tablets are preferred, in particular tablets
`rapidly releasing the active compound.
`Pet. 22 (quoting Ex. 1001, 8:14–30). But, as Patent Owner notes,
`Petitioner’s block quotation is misleading. Prelim. Resp. 10. As seen in a
`fuller reading of the relevant passage in the specification itself, Petitioner
`has omitted the paragraph break after the first sentence. When viewed in
`context, we agree with Patent Owner that the specification identifies “tablets
`releasing the active compound rapidly or in a modified manner” as an
`example of an “oral dosage form.” Ex. 1001, 8:12–19. After the paragraph
`break, however, the specification goes on to discuss tablets and specifically
`defines “rapid-release tablets” “[i]n the context of the present invention.”
`Id. at 8:21–22.
`
`6
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`

`

`IPR2018-01143
`Patent 9,539,218 B2
`We are not persuaded to construe the term otherwise based on
`Petitioner’s assertion that the term is not in quotation marks in the
`specification. See Reply 2. A lack of quotation marks is not dispositive,
`especially given the definition is in the section of the specification where
`“the following terms and abbreviations are defined.” See Ex. 1001, 7:22–24.
`Thus, we are persuaded that the specification has provided a clear and
`express definition of the term that is narrower than that proposed by
`Petitioner.
`To further support its construction, Petitioner cites extrinsic evidence
`in the form of testimony from its declarants and definitions from various
`textbooks and other publications. Pet. 22–24. We are not persuaded, as
`such extrinsic evidence cannot outweigh the clear definition of “rapid-
`release tablet” expressly set forth by the patent specification. See Tempo
`Lighting, Inv. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014) (finding
`that “extrinsic evidence is not irrelevant, but has relatively little probative
`value in view of the prevailing intrinsic evidence”).
`Finally, Petitioner points to alleged concessions made by Patent
`Owner to the European Patent Office in an Opposition proceeding (Pet. 25–
`26) and to the district court in the copending litigation (Reply 1–2).
`Petitioner argues that Patent Owner agreed in the European Opposition that a
`“rapid-release tablet” means “any tablet that is not a sustained- or retarded-
`release tablet.” Pet. 25–26. Like the district court, we are persuaded that
`Patent Owner’s alleged concession appears to have been a position taken to
`streamline the European litigation. See Prelim. Resp. 15; Ex. 1015, 28 (“To
`simplify matters for the present proceedings, we will adopt for the purpose
`of the present proceedings the understanding proposed by the majority of the
`
`7
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`

`

`IPR2018-01143
`Patent 9,539,218 B2
`opponents . . . .”); see also Ex. 2002, 3 (district court’s Markman Order
`accepting Patent Owner’s explanation).
`Petitioner also argues that the definition in the specification is unclear,
`as evidenced by the fact that Patent Owner asked the district court to further
`construe the construction of “rapid-release tablet.” Reply 1–2. The district
`court denied Patent Owner’s request, stating that Patent Owner’s request for
`further construction amounts to an issue of fact to be determined at trial.
`Ex. 1069, 1. Because the issues in the district court case that gave rise to
`Patent Owner’s request are not at issue here, we are not persuaded that
`Patent Owner’s request for further construction in that case justifies adopting
`Petitioner’s construction here.
`Accordingly, on this record, we construe the term “rapid-release
`tablet” to mean “a tablet that, according to the USP release method using
`apparatus 2 (paddle), has a Q value (30 minute) of 75%.”
`We determine that it is unnecessary to construe any other term for
`purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642
`F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to
`the extent necessary to resolve the controversy.’”) (quoting Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`C. Whether to Exercise Our Discretion Under
`35 U.S.C. § 325(d) for Ground 1
`Institution of inter partes review is discretionary. See Harmonic Inc.
`v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining “the
`PTO is permitted, but never compelled, to institute an IPR proceeding”).
`For instance, § 325(d) states “[i]n determining whether to institute or order a
`proceeding under this chapter . . . [t]he Director may take into account
`
`8
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`

`

`IPR2018-01143
`Patent 9,539,218 B2
`whether, and reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the Office.”
`In evaluating whether the same or substantially the same prior art or
`arguments were previously presented to the Office under § 325(d), the Board
`has considered a number of non-exclusive factors, including, for example:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis
`for rejection;
`(d) the extent of the overlap between the arguments made
`during examination and the manner in which Petitioner
`relies on the prior art or Patent Owner distinguished the
`prior art;
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its consideration of the asserted prior art;
`and
`(f) the extent to which additional evidence and facts presented
`in the Petition warrant reconsideration of the asserted prior
`art or arguments.
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586,
`slip op. 17–18 (PTAB Dec. 15, 2017) (Paper 8) (informative) (“the Becton
`Dickinson factors”).
`
`The Prior Board Decision
`1.
`During prosecution of the ’218 patent application, the examiner issued
`a final rejection of the pending claims as obvious over the ’610 Publication,
`
`9
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`

`

`IPR2018-01143
`Patent 9,539,218 B2
`“Kubitza 1,”4 and Kubitza # 3010 (referred to by the Board as “Kubitza 2”).
`Ex. 1004, 111. On appeal, the Board found that the claims directed to a
`“rapid-release oral dosage form” were obvious over the cited art. Id. at 113–
`16. Then-pending claim 5, however, recited a “rapid-release tablet,” which
`the Board interpreted according to the “express definition thereof provided
`in the Specification.” Id. at 116. The Board could not determine based on
`the evidence of record whether the disclosure of Kubitza # 3010 taught or
`suggested a “rapid-release tablet” according to that interpretation. Id. at
`116–17. Thus, the Board reversed the rejection of claim 5. Id. at 117.
`After the appeal, the examiner entered an examiner’s amendment that
`amended the claims to recite a “rapid-release tablet” instead of a “rapid-
`release oral dosage form.” Ex. 1004, 53–54. The Examiner stated in the
`Reasons for Allowance that the cited prior art “does not teach, disclose nor
`render obvious the instantly claimed method wherein a rapid-release tablet is
`utilized.” Id. at 55.
`Application of Our Discretion Under 35 U.S.C. § 325(d)
`2.
`Patent Owner argues that we should exercise our discretion to deny
`institution under § 325(d) because substantially the same prior art or
`arguments were previously presented to the Office. Pet. 20–25.
`
`
`4 The Board identified “Kubitza 1” as Kubitza et al., Oral, Direct Factor Xa
`Inhibitor—In Healthy Male Subjects, 102 BLOOD 811a (Nov. 16, 2003).
`Ex. 1004, 110. The cited page 811a of BLOOD, however, does not include an
`abstract with that title. See Ex. 1006, 811a. Nevertheless, Petitioner appears
`to equate Kubitza 1 with Kubitza # 3004. See Reply 3–4 (citing the Board’s
`prior decision and referring to “Kubitza abstracts # 3004 and # 3010 and the
`’610 publication”). Regardless, the relied-upon portions of Kubitza 1 appear
`to be substantially similar to the disclosures in Kubitza # 3004. Compare
`Ex. 1004, 112 (FF8 and FF9) with Ex. 1006, 811a. We, therefore, consider
`Kubitza 1 to be substantially similar to Kubitza # 3004.
`10
`
`

`

`IPR2018-01143
`Patent 9,539,218 B2
`Specifically, Patent Owner argues that Ground 1 is premised on the
`arguments that (1) the Board incorrectly construed the term “rapid-release
`tablet”; (2) the Board should adopt a different construction here; and (3) the
`claims are obvious in view of that different construction. Id. at 21. Because
`there is no reason to construe the term differently now, Patent Owner asserts
`we should exercise our discretion under § 325(d) because the substantive
`obviousness positions of Ground 1 were already considered and rejected by
`the Office during prosecution of the patent. Id. at 20.
`Petitioner asserts that the Petition includes new evidence not
`presented during prosecution or before the Board in the ex parte appeal.
`Pet. 15-18 (citing new testimony and supporting reference evidence). But
`the new evidence regarding Ground 1 relates to evidence in support of
`Petitioner’s proposed construction of the term “rapid-release tablet,” which,
`as explained above, we do not find persuasive. See id. at 15–17; see also
`supra. In response to Patent Owner’s § 325(d) argument for Ground 1,
`Petitioner simply argues that Patent Owner’s argument is unavailing because
`the Board should adopt its construction. Reply 3.
`Having considered the parties’ respective arguments and evidence, we
`are persuaded that exercising our discretion under § 325(d) is appropriate for
`Ground 1. Becton Dickinson factors (a)–(d) relate to whether and to what
`extent the prior art asserted in the Petition was considered and relied upon by
`the examiner during prosecution. Here, substantially the same prior art that
`Petitioner asserts in Ground 1 was extensively considered by the examiner
`and the Board. That is, the examiner and the Board considered whether the
`claims were obvious over the ’610 Publication, Kubitza # 3004 (i.e., Kubitza
`1), and Kubitza # 3010 (i.e., Kubitza 2). The Petition also relies on Kubitza
`# 3003. See, e.g., Pet. 34, 44. But Petitioner does not assert—nor do we
`
`11
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`

`IPR2018-01143
`Patent 9,539,218 B2
`ascertain—that the relied-upon portions of Kubitza # 3003 cure the
`deficiencies of the ’610 publication, Kubitza # 3004, or Kubitza # 3010.
`See, e.g, Pet. 34, 44–45 (discussing Ex. 3003); Reply (no citation to Ex.
`3003). Thus, these factors weigh heavily in favor of exercising our
`discretion to deny institution.
`Becton Dickinson factors (e) and (f) look to the Petition and whether
`Petitioner has made a case for reconsidering the asserted prior art. We find
`that Petitioner has not. As noted above, we are not persuaded that the prior
`Board panel (or the district court) erred in construing the term “rapid-release
`tablet” according to the express definition in the specification. Thus,
`Petitioner’s arguments regarding claim construction do not point out
`sufficiently how the Board and the examiner erred in its consideration of the
`cited prior art. Nor has Petitioner identified any additional facts and
`evidence unrelated to claim construction that justify reconsidering the prior
`art or arguments set forth in Ground 1.
`Accordingly, under the facts and circumstances of this case, we find
`that substantially the same prior art and arguments were previously
`presented to the Office. We, therefore, determine that exercising our
`discretion under § 325(d) to deny institution is appropriate for Ground 1.
`D. Whether to Exercise Our Discretion Under
`35 U.S.C. § 314(a) for Ground 2
`Patent Owner asserts that we should also exercise our discretion under
`§ 325(d) for Ground 2. Prelim. Resp. 21–25. Ground 2, however, differs
`from Ground 1 because Petitioner asserts that even under the express
`definition of “rapid-release tablet,” the claims are obvious. Pet. 46. To that
`end, Petitioner additionally relies on Forsman, which was not before the
`
`12
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`IPR2018-01143
`Patent 9,539,218 B2
`Office during prosecution and which allegedly teaches the specific
`requirements for a “rapid-release tablet.” Pet. 17–18.
`Patent Owner notes, however, that Forsman is at issue in the
`copending district court case. Surreply 3. Moreover, Petitioner relies on the
`same declarants (Drs. Benet and Doherty), and the same prior art references
`(the ’610 publication, the Kubitza Abstracts, and the Forsman references)
`that it relies on in the Petition. Id. at 4. The district court also has construed
`“rapid-release tablet” as we have here, according to the express definition set
`forth in the specification. Ex. 2002, 1. Finally, Patent Owner indicates that
`the district court has set trial for April 1, 2019. Surreply 4.
`It is well established that we have discretion regarding whether to
`institute trial under § 314(a). See 35 U.S.C. § 314(a) (authorizing institution
`of an inter partes review under particular circumstances, but not requiring
`institution under any circumstances); see also Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2140 (2016) (citing § 314(a) and stating the PTO’s
`“decision to deny a petition is a matter committed to the Patent Office’s
`discretion”). As such, even assuming there is a reasonable likelihood that
`Petitioner would prevail with respect to at least one challenged claim (which
`we do not assess here), we have discretion on whether to institute trial based
`on the facts and circumstances of each case.
`Having considered the parties’ respective arguments, we determine
`that exercising our discretion to not institute trial is appropriate here. Given
`the advanced stage of the copending district court case and the extensive
`overlap of the asserted prior art, expert testimony, and claim construction,
`we find it would be an inefficient use of Board resources to proceed with
`this inter partes review in parallel with the district court case. See NHK
`Spring Co. v. Intri-Plex Techs., Inc., Case IPR2018-00752, slip op. at 19–20
`
`13
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`

`IPR2018-01143
`Patent 9,539,218 B2
`(PTAB Sept. 12, 2018) (Paper 8) (finding the advanced state of a copending
`district court proceeding addressing the same prior art to be an additional
`factor weighing in favor of denying the petition under § 314(a)). That
`inefficiency is amplified where the district court trial is set to occur on April
`1, 2019, which is more than eight months before our Final Written Decision
`would be due in December 2019, if we were to institute trial.
`Thus, we find that instituting an inter partes review of the ’218 patent
`under these facts and circumstances would be contrary to the overall goal of
`the AIA to “make the patent system more efficient by the use of post-grant
`review procedures.” General Plastic Industrial Co., Ltd. v. Canon
`Kabushiki Kaisha, Case IPR2016-01357, slip op. at 16–17 (PTAB Sept. 6,
`2017) (Paper 19) (precedential as to § II.B.4.i). Accordingly, we determine
`that exercising our discretion to deny institution under § 314(a) is
`appropriate as to Ground 2.
`III. CONCLUSION
`For the foregoing reasons, we exercise our discretion under 35 U.S.C.
`§§ 314(a) and 325(d) and decline to institute an inter partes review of the
`challenged claims of the ’218 patent.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’218 patent and no trial is instituted.
`
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`IPR2018-01143
`Patent 9,539,218 B2
`
`
`PETITIONER:
`
`Steven Parmelee
`Michael Rosato
`Jad Mills
`Wilson Sonsini Goodrich & Rosati
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`PATENT OWNER:
`
`Dov Grossman
`Ben Picozzi
`Williams & Connolly LLP
`dgrossman@wc.com
`bpicozzi@wc.com
`
`
`
`
`
`15
`
`