Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
` Paper No. 11
`
` Entered: September 9, 2019
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NALOX-1 PHARMACEUTICALS, LLC,
`Petitioner,
`
`v.
`
`OPIANT PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00690
`Patent 9,468,747 B2
`____________
`
`
`Before ERICA A. FRANKLIN, ZHENYU YANG,
`and JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`
`YANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
` Paper No. 11
`
` Entered: September 9, 2019
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NALOX-1 PHARMACEUTICALS, LLC,
`Petitioner,
`
`v.
`
`OPIANT PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00690
`Patent 9,468,747 B2
`____________
`
`
`Before ERICA A. FRANKLIN, ZHENYU YANG,
`and JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`
`YANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00690
`Patent 9,468,747 B2
`
`
`INTRODUCTION
`Nalox-1 Pharmaceuticals, LLC (“Petitioner”) filed a Petition (Paper 1
`(“Pet.”)), seeking an inter partes review of claims 1–45 of U.S. Patent
`No. 9,468,747 B2 (“the ’747 patent,” Ex. 1001). Opiant Pharmaceuticals,
`Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”).
`For the reasons provided below, we exercise our discretion under
`35 U.S.C. § 314 to deny institution of an inter partes review.
`Related Proceedings
`Petitioner challenges claims 1–45 of the ’747 patent in two other
`concurrently filed petitions. In IPR2019-00688, Petitioner relies on Wyse1
`as the primary reference; and in IPR2019-00689, Petitioner relies on Wang2
`as the primary reference.
`The ’747 patent is one of five patents listed in the Orange Book for
`intranasal naloxone sold under the brand name NARCAN. Pet. 1; Paper 9,
`1. Petitioner also filed petitions for inter partes review, challenging the
`other four patents listed. Pet. 6; Paper 5, 1–2.
`According to the parties, Patent Owner asserted all five Orange-Book-
`listed patents in Adapt Pharma Operations Ltd. v. Teva Pharmaceuticals
`USA, Inc., Case 2:16-cv-07721 (D.N.J.) (consolidated, “the Teva Case”),
`and Adapt Pharma Operations Ltd. v. Perrigo UK FINCO Limited
`
`
`1 Wyse et al., U.S. Patent No. 9,192,570 B2, issued November 24, 2015
`(Ex. 1007).
`2 Wang et al., Chinese Patent Publication No. CN 1575795 A, published
`February 9, 2005 (Ex. 1008).
`
`2
`
`
`
`IPR2019-00690
`Patent 9,468,747 B2
`
`Partnership, Case 2:18-cv-15287 (D.N.J.). Pet. 6; Paper 5, 2. Petitioner is
`not involved in those actions. Pet. 6.
`Background of Technology and the ’747 Patent
`Opioid overdose is a crisis in the United States. Ex. 1001, 6:43.
`Naloxone is an opioid receptor antagonist that was initially approved for use
`by injection for the reversal of opioid overdose. Id. at 2:13–14. Naloxone
`hydrochloride injection prevents or reverses the effects of opioids,
`“including respiratory depression, sedation and hypotension.” Ex. 1044,3
`1300.
`
`According to the ’747 patent, administering naloxone via injection
`requires trained medical personnel and imposes the risk of exposure to blood
`borne pathogens through needlestick injury. Ex. 1001, 6:20–32. The
`’747 patent discloses that “it ha[d] been suggested that in view of the
`growing opioid overdose crisis in the US, naloxone should be made
`available over-the-counter (OTC), which would require a device, such as a
`nasal spray device, that untrained consumers are able to use safely.” Id. at
`6:42–46.
`The ’747 patent acknowledges that nasal administration of naloxone
`was known and used by numerous medical services and health departments.
`Ex. 1001, 2:29–6:13, see also id. at 4:39–42 (“Overdose education and nasal
`naloxone distribution (OEND) programs are community-based interventions
`that educate people at risk for overdose and potential bystanders on how to
`prevent, recognize and respond to an overdose.”). It points out, however,
`
`
`3 Physicians’ Desk Reference 2003, entry for NARCAN (Naloxone
`Hydrochloride Injection, USP).
`
`3
`
`
`
`IPR2019-00690
`Patent 9,468,747 B2
`
`although some studies “reported that the nasal administration of naloxone is
`as effective as the intravenous route in opiate addicts,” others “reported that
`naloxone administered intranasally displays a relative bioavailability of 4%
`only and concluded that the IN [intranasal] absorption is rapid but does not
`maintain measurable concentrations for more than an hour.” Id. at 2:47–55.
`The ’747 patent states
`Thus, there remains a need for durable, easy-to-use, needleless
`devices with storage-stable formulations, that can enable
`untrained individuals to quickly deliver a therapeutically
`effective dose of a rapid-acting opioid antagonist to an opioid
`overdose patient. The therapeutically effective dose should be
`sufficient to obviate the need for the untrained individual to
`administer either a second dose of opioid antagonist or an
`alternative medical intervention to the patient, and to stabilize the
`patient until professional medical care becomes available.
`Id. at 6:52–61.
`According to the ’747 patent, its invention relates to devices adapted
`for nasal delivery of “a therapeutically effective amount of an opioid
`antagonist selected from naloxone and pharmaceutically acceptable salts
`thereof, wherein the device is pre-primed, and wherein the therapeutically
`effective amount, is equivalent to about 2 mg to about 12 mg of naloxone
`hydrochloride.” Id. at 6:63–7:2.
`Illustrative Claims
`Among the challenged claims, claims 1 and 30 are independent, and
`are reproduced below:
`A method of treatment of opioid overdose or a symptom
`1.
`thereof, comprising nasally administering to a patient in need
`thereof a dose of naloxone hydrochloride using a single-use, pre-
`primed device adapted for nasal delivery of a pharmaceutical
`composition to a patient by one actuation of said device into one
`nostril of said patient, having a single reservoir comprising a
`
`4
`
`
`
`IPR2019-00690
`Patent 9,468,747 B2
`
`
`pharmaceutical composition which is an aqueous solution of
`about 100 µL comprising:
`about 4 mg naloxone hydrochloride or a hydrate thereof;
`between about 0.2 mg and about 1.2 mg of an isotonicity agent;
`between about 0.005 mg and about 0.015 mg of a compound
`which is at least one of a preservative, a cationic surfactant, and
`a permeation enhancer;
`between about 0.1 mg and about 0.5 mg of a stabilizing agent;
`and
`an amount of an acid sufficient to achieve a pH of 3.5-5.5.
`30. A
`pharmaceutical
`formulation
`for
`intranasal
`administration comprising, in an aqueous solution of not more
`than about 140 µL:
`about 4 mg naloxone hydrochloride or a hydrate thereof;
`between about 0.2 mg and about 1.2 mg of an isotonicity agent;
`between about 0.005 mg and about 0.015 mg of a compound
`which is at least one of a preservative, a cationic surfactant, and
`a permeation enhancer;
`between about 0.1 mg and about 0.5 mg of a stabilizing agent;
`an amount of an acid sufficient to achieve a pH of 3.5-5.5.
`Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–45 under 35 U.S.C.
`§ 103 on the following grounds:
`
`5
`
`
`
`IPR2019-00690
`Patent 9,468,747 B2
`
`
`Claim(s)
`1–4, 16–24, 30–33
`28–29, 34–39
`40–45
`5–7, 10–14
`8–9
`
`References
`Davies,4 HPE,5 Bahal,6 and Kushwaha7
`Davies, HPE, Bahal, Kushwaha, and Wyse8
`Davies, HPE, Bahal, Kushwaha, and Wyse or
`Wang and Wermeling 20139
`Davies, Djupesland,10 HPE, Bahal, and Kushwaha
`Davies, Djupesland, HPE, Bahal, Kushwaha, and
`the ’291 patent11
`Davies, Djupesland, HPE, Bahal, Kushwaha, and
`Wyse
`Davies, Djupesland, HPE, Bahal, Kushwaha, and
`Wyse or Wermeling 2013 or Wang
`In support of its patentability challenge, Petitioner relies on the
`Declarations of Maureen D. Donovan, Ph.D. (Ex. 1002) and Günther
`Hochhaus, Ph.D. (Ex. 1003).
`
`25–27
`
`15
`
`
`4 Davies et al., PCT Publication WO 00/62757, published October 26, 2000
`(Ex. 1009).
`5 Handbook of Pharmaceutical Excipients, 56–60, 64–66, 78–81, 220–22,
`242–44, 270–72, 441–45, 517–22, 596–98 (Rowe et al. eds., 6th ed. 2009)
`(Ex. 1012).
`6 Bahal et al., U.S. Patent No. 5,866,154, issued February 2, 1999
`(Ex. 1014).
`7 Kushwaha et al., Advances in Nasal Trans-Mucosal Drug Delivery, 01(07)
`J. APPLIED PHARM. Sci. 21–28 (2011) (Ex. 1013).
`8 U.S. Patent No. 9,192,570, issued November 24, 2015 (Ex. 1007).
`9 Wermeling, A Response to the Opioid Overdose Epidemic: Naloxone
`Nasal Spray, 3 DRUG DELIV. & TRANSL. RES. 63–74 (2013) (Ex. 1016).
`10 Djupesland, Nasal Drug Delivery Device: Characteristics and
`Performance in a Clinical Perspective - A Review, 3 DRUG DELIV. &
`TRANSL. RES. 42–62 (2013) (Ex. 1010).
`11 U.S. Patent No. 8,198,291, issued June 12, 2012 (Ex. 1015).
`6
`
`
`
`IPR2019-00690
`Patent 9,468,747 B2
`
`
`DISCRETIONARY DENIAL
`Overview
`As explained above, Petitioner has concurrently filed three petitions,
`each of which challenges claims 1–45 of the ’747 patent. Patent Owner
`argues that we should exercise discretion to deny institution of the Davies
`Petition at issue here because it is redundant of the Wyse Petition in
`IPR2019-00688. See Prelim. Resp. 6–9. Patent Owner contends the Davies
`Petition “largely duplicates” the Wyse Petition “merely adding grounds that
`make the same arguments with more-complicated combinations of more
`references.” Id. at 1. Patent Owner points out that “large swaths of text
`[are] word-for-word identical,” and that although the present Petition is
`premised on a different primary reference (i.e., Davies), it “relies extensively
`on the Wyse reference that is the principal reference in Case
`IPR2019-00688.” Id. at 2. According to Patent Owner, the Petition here
`“adds nothing meaningful to Case IPR2019-00688.” Id.
`On August 1, 2019, we issued an order requiring Petitioner to provide
`a Notice identifying:
`(1) a ranking of the three Petitions in the order in which it wishes
`the panel to consider the merits, if the Board uses its discretion
`to institute any of the Petitions, and (2) a succinct explanation of
`the differences between the Petitions, why the differences are
`material, and why the Board should exercise its discretion to
`consider the additional Petitions if it identifies a Petition that
`satisfies Petitioner’s burden under 35 U.S.C. § 314(a).
`Paper 8, 4. We also gave Patent Owner an opportunity to respond. Id. at 5.
`
`Petitioner filed its Notice on August 5, 2019. Paper 9 (“Notice”). In
`that Notice, Petitioner requests that we consider the Wyse Petition first.
`Notice 1. Petitioner further asserts that “[d]ue to different statutory bases for
`
`7
`
`
`
`IPR2019-00690
`Patent 9,468,747 B2
`
`invalidity, as well as substantive differences in the[] three primary
`references,” we “should institute review for all three Petitions.” Id. In its
`Response to Petitioner’s Notice, Patent Owner continues its argument that
`the present Petition is redundant, urging “if the Board institutes anything, it
`should institute only the Wyse Petition.” Paper 10, 1 (“Resp.”).
`
`For the reasons explained in our decision instituting review in
`IPR2019-00688, we are instituting inter partes review of claims 1–45 on the
`grounds presented in the Wyse Petition. As explained more fully below, we
`exercise discretion to deny institution of the present Petition under 35 U.S.C.
`§ 314(a) in light of IPR2019-00688.12
`35 U.S.C. § 314(a)
`Under § 314(a), the Director has discretion to deny institution of an
`inter partes review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2140 (2016) (“[T]he agency’s decision to deny a petition is a matter
`committed to the Patent Office’s discretion.”); SAS Inst. Inc. v. Iancu, 138 S.
`Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion
`on the question whether to institute review . . . .” (emphasis omitted));
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)
`(“[T]he PTO is permitted, but never compelled, to institute an IPR
`proceeding.”).
`Our discretionary determination whether to institute review takes into
`consideration guidance in the Trial Practice Guide Update (July 2019),
`available at https://www.uspto.gov/TrialPracticeGuide3 (referenced in
`
`
`12 Because we exercise discretion to deny institution on this basis, we need
`not make a determination regarding the other arguments presented in Patent
`Owner’s Preliminary Response.
`
`8
`
`
`
`IPR2019-00690
`Patent 9,468,747 B2
`
`Office Patent Trial Practice Guide, July 2019 Update, 84 Fed. Reg. 33,926
`(July 16, 2019)) (“TPG July 2019 Update”). The TPG July 2019 Update
`addresses situations where Petitioner has concurrently filed parallel petitions
`challenging the same patent. The TPG July 2019 Update states:
`Based on the Board’s prior experience, one petition should be
`sufficient to challenge the claims of a patent in most situations.
`Two or more petitions filed against the same patent at or about
`the same time (e.g., before the first preliminary response by the
`patent owner) may place a substantial and unnecessary burden
`on the Board and the patent owner and could raise fairness,
`timing, and efficiency concerns. See 35 U.S.C. § 316(b). In
`addition, multiple petitions by a petitioner are not necessary in
`the vast majority of cases.
`TGP July 2019 Update 26.13 The TGP July 2019 Update acknowledges that
`“there may be circumstances in which more than one petition may be
`necessary, including, for example, when the patent owner has asserted a
`large number of claims in litigation or when there is a dispute about priority
`date requiring arguments under multiple prior art references,” but
`characterizes such circumstances as “rare.” Id.
`
`
`13 This is consistent with the guidance previously provided in the August
`2018 update to the Trial Practice Guide Update (August 2018), available at
`https://go.usa.gov/xU7GP (referenced in Office Patent Trial Practice Guide,
`August 2018 Update, 83 Fed. Reg. 39,989 (August 13, 2018)) (“TGP August
`2018 Update”). The TPG August 2018 Update explains that “[t]here may be
`other reasons besides the ‘follow-on’ petition context where the ‘effect . . .
`on the economy, the integrity of the patent system, the efficient
`administration of the Office, and the ability of the Office to timely complete
`proceedings,’ 35 U.S.C. § 316(b), favors denying a petition,” including
`“other proceedings related to the same patent . . . at the Office.” Id. at 10.
`9
`
`
`
`IPR2019-00690
`Patent 9,468,747 B2
`
`
`28–29, 34–39
`
`40–45
`
`In addition to the guidance in the Trial Practice Guide, we are also
`mindful to construe our rules to “secure the just, speedy, and inexpensive
`resolution of every proceeding.” 37 C.F.R. § 42.1(b).
`Analysis
`Petitioner’s arguments in the present proceeding are substantially
`similar to those in the Wyse Petition. The table below provides a claim-by-
`claim comparison of the prior art Petitioner asserts in each proceeding.
`Challenged
`IPR2019-00688
`IPR2019-00690
`Claim(s)
`(Wyse Petition)
`(Davies Petition)
`1–3, 16–24,
`Davies, HPE, Bahal, and
`Wyse and HPE
`30–33
`Kushwaha
`Wyse, Djupesland, and
`Davies, HPE, Bahal, and
`4
`HPE
`Kushwaha
`Davies, HPE, Bahal,
`Wyse and HPE
`Kushwaha, and Wyse
`Davies, HPE, Bahal,
`Kushwaha, and Wyse or
`Wang and Wermeling 2013
`Davies, Djupesland, HPE,
`5–7, 10–14 Wyse, Djupesland, and
`Bahal, and Kushwaha
`HPE
`Davies, Djupesland, HPE,
`Wyse, Djupesland,
`Bahal, Kushwaha, and the ’291
`HPE, and the ’291
`patent
`patent
`Davies, Djupesland, HPE,
`Wyse, Djupesland, and
`Bahal, Kushwaha, and Wyse or
`HPE
`Wermeling 2013 or Wang
`Davies, Djupesland, HPE,
`Wyse, Djupesland, and
`Bahal, Kushwaha, and Wyse
`HPE
`As can be seen from the table above, the main difference between the
`petitions is that here Petitioner relies on Davies, as opposed to Wyse, as the
`primary reference for its obviousness combinations. More specifically, in
`the Wyse Petition, Petitioner relies on Wyse for its teaching of intranasal
`naloxone formulations in a single-use, pre-primed device, whereas here
`
`Wyse and HPE
`
`8, 9
`
`15
`
`25–27
`
`10
`
`
`
`IPR2019-00690
`Patent 9,468,747 B2
`
`Petitioner relies on Davies for the same teaching. Compare Pet. 23, 27–36,
`with Wyse Pet. 26, 29–35. In both proceedings, Petitioner relies on HPE,
`Djupesland, and the ’291 patent as secondary references for essentially the
`same disclosure. Compare Pet. 30–31 (HPE), 51 (Djupesland), 55–56 (the
`’291 patent), with Wyse Pet. 33–34 (HPE), 49–50 (Djupesland), 56–57 (the
`’291 patent). Moreover, Petitioner relies on the same declarations to support
`its arguments in the Davies Petition that it does in the Wyse Petition.
`
`The additional secondary references asserted in the Davies Petition do
`not substantively distinguish Petitioner’s arguments from those in the Wyse
`Petition. These references relate to limitations that Petitioner contends are
`taught by Wyse, but acknowledges are not taught by Davies. It is apparently
`for this reason that Petitioner decided not to rely on them to supplement the
`teachings of the primary reference in its grounds in the Wyse Petition.
`Indeed, Petitioner has not identified any differences relating to these
`secondary references that it contends materially distinguish its arguments
`here from those in the Wyse Petition. See generally Notice 1–3.
`
`To the contrary, Petitioner’s arguments in the Davies Petition largely
`rely on the teachings in Wyse, just as they do in the Wyse Petition. As
`shown in the table above, several of Petitioner’s grounds in the Davies
`Petition expressly rely on Wyse. Moreover, Petitioner presents essentially
`the same argument concerning the “about 4 mg naloxone” limitation of
`claim 1 in this proceeding that it does in the Wyse Petition. In both
`Petitions, Petitioner contends that the primary reference discloses an
`overlapping dosage range and relies on the same evidence, including data
`from Table 4 of Wyse, to argue “[a] POSA . . . would have been motivated
`to deliver a naloxone dose of about 4-6 mg.” Compare Pet. 17, with Wyse
`
`11
`
`
`
`IPR2019-00690
`Patent 9,468,747 B2
`
`Pet. 19–20. Thus, even for those grounds in the Davies Petition that do not
`expressly include Wyse in the stated combination of references, Petitioner
`nevertheless relies on Wyse as evidence for its argument that a 4 mg dose
`would be obvious. Indeed, significant portions of the arguments in the
`present Petition are substantively identical to those presented in the Wyse
`Petition. Compare Pet. 12–20, 30–31, with Wyse Pet. 15–23, 33–34.
`
`None of the “differences” Petitioner identifies in its Notice warrant
`institution of a second IPR. See Notice 3 (table summarizing alleged
`“differences”). First, Petitioner contends that because Wyse “is prior art
`under § 102(a)(2),” whereas Davies is prior art under § 102(a)(1), “Patent
`Owner may seek to remove Wyse as prior art under an exception under
`§ 102(b)(2), but will be unable to do so for Davies.” See Notice 1–2. Patent
`Owner has stipulated that it will not dispute that both Wyse and Davies are
`prior art. Resp. 1. Thus, there is no dispute as to Wyse’s status as prior art
`that could justify the burden of instituting an additional inter partes review
`to consider what are essentially the same arguments, but premised on a
`different primary reference. Cf TPG July 2019 Update 26 (noting that a
`second proceeding may be necessary if there “is a dispute about priority date
`requiring arguments under multiple prior art references”).
`We are likewise not persuaded by Petitioner’s argument that a second
`IPR is warranted because the Wyse Petition relies on “the Declaration of
`Dr. Donovan to support the position that a POSA would not have considered
`Wyse to teach away from the use of BAC [i.e., benzalkonium chloride],”
`whereas the Davies Petition “do[es] not rely [on] Wyse for the teaching of
`BAC, but instead for its other teachings.” Notice 2–3. To the extent
`Petitioner is suggesting that the alleged teaching away in Wyse is not at
`
`12
`
`
`
`IPR2019-00690
`Patent 9,468,747 B2
`
`issue here, Petitioner is wrong. Patent Owner raises exactly the same
`teaching away argument in response to the Davies Petition that it does in
`response to the Wyse Petition. Compare Prelim. Resp. 48–58, with
`IPR2019-00688 Prelim. Resp. 49–59. Moreover, Petitioner relies on the
`same testimony from Dr. Donovan in support of the Davies Petition. See
`Pet. 61 (citing Dr. Donovan’s testimony in support of Petitioner’s argument
`that a POSA “would not have properly concluded that Wyse taught away
`from using BAC with naloxone”). It makes no difference that the grounds in
`the Davies Petition only rely on Wyse’s “other teachings” (Notice 3)
`because “[a] reference must be considered for everything that it teaches,”
`which here includes Wyse’s statements regarding the use of BAC in a
`naloxone intranasal formulation. See In re Applied Materials, Inc., 692 F.3d
`1289, 1298 (Fed. Cir. 2012). Moreover, Petitioner’s arguments regarding
`the BAC limitation are similar in both petitions and largely rely on the same
`secondary reference (HPE) to support Petitioner’s argument that the claimed
`inclusion of BAC would have been obvious. See Pet. 30–31; Wyse Pet.
`33–34.
`None of the other “differences” Petitioner identifies weigh in favor of
`instituting a second inter partes review. See Notice 3 (table). For example,
`Petitioner asserts that Wyse “[a]nticipates” certain limitations that Davies
`does not. Id. If anything, that suggests the grounds premised on Wyse as
`the primary reference present a stronger argument for unpatentability than
`the grounds in the Davies Petition. It does not demonstrate a need for an
`additional IPR to consider essentially the same arguments, but involving a
`larger set of references to account for limitations that Petitioner
`acknowledges Davies does not expressly teach.
`
`13
`
`
`
`IPR2019-00690
`Patent 9,468,747 B2
`
`
`In sum, having considered the parties’ arguments and evidence in both
`proceedings, we determine that instituting inter partes review on the Davies
`Petition would result in an essentially duplicative proceeding running
`concurrently with the proceeding on the Wyse Petition. Such a proceeding
`“would place a substantial and unnecessary burden on the Board and the
`patent owner and could raise fairness, timing, and efficiency concerns.” See
`TGP July 2019 Update 26. We have considered Petitioner’s preference that
`the Wyse Petition be instituted first and determined that institution on that
`petition is appropriate. Thus, all of the claims of the ’747 patent are subject
`to inter partes review of the Wyse Petition. On the record before us, we do
`not find the differences between the references and arguments in the Davies
`Petition and those in the Wyse Petition to be sufficiently material to
`outweigh the inefficiencies and costs of instituting an additional proceeding
`brought by the same Petitioner on the same claims of the same patent.
`Accordingly, we exercise our discretion to deny instituting review of the
`Davies Petition.
`
`CONCLUSION
`For the foregoing reasons, based on the circumstances of this case, we
`exercise discretion under 35 U.S.C. § 314 and deny the present Petition
`requesting institution of inter partes review of claims 1–45 of the
`’747 patent.
`
`ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s request for an inter partes review of
`claims 1–45 of the ’747 patent is denied and no inter partes review is
`instituted.
`
`14
`
`
`
`IPR2019-00690
`Patent 9,468,747 B2
`
`PETITIONER:
`Yelee Kim
`Richard Berman
`Christopher Yaen
`Janine Carlan
`Bradford Frese
`ARENT FOX LLP
`Yelee.kim@arentfox.com
`Richard.berman@arentfox.com
`Chirstopher.yaen@arentfox
`Janine.carlan@arentfox.com
`Bradford.frese@arentfox.com
`
`
`PATENT OWNER:
`Robert Green
`Jessica Mackay
`GREEN, GRIFFITH & BORG-BREEN, LLP
`rgreen@greengriffith.com
`jmackay@greengriffith.com
`
`
`
`15
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
