Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 44
`Entered: January 27, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALERE INC.,
`Petitioner,
`v.
`REMBRANDT DIAGNOSTICS, LP,
`Patent Owner.
`
`IPR2016-01502
`Patent 6,548,019 B1
`
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding and Remand Scheduling Order
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 44
`Entered: January 27, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALERE INC.,
`Petitioner,
`v.
`REMBRANDT DIAGNOSTICS, LP,
`Patent Owner.
`
`IPR2016-01502
`Patent 6,548,019 B1
`
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding and Remand Scheduling Order
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2016-01502
`Patent 6,548,019 B1
`This case was remanded from the Court of Appeals for the Federal
`Circuit for us to consider grounds of unpatentability asserted in the Petition
`but not addressed in our Final Written Decision (Paper 39, “FWD” or “Final
`Written Decision”).
`We instituted review of claims 1–5, 9, and 11–15 of US Patent No.
`6,548,019 (“the ’019 patent”) on seven of thirteen grounds asserted in the
`Petition. Paper 13, 6, 36–37 (“Institution Decision” or “Inst. Dec.”). We did
`not institute a trial with respect to whether: (1) claims 2–6 are anticipated by
`Lee-Own; (2) claims 2–6 would have been obvious over Lee-Own and
`Tydings; (3) claim 10 would have been obvious over MacKay and Charm or
`May; (4) claims 2–6 would have been obvious over DE ’825 or DE ’825 and
`Cipkowski; and (5) claims 2–6 and 10 would have been obvious over
`Tydings and MacKay or Lee-Own. Inst. Dec. 6, 36.
`Patent Owner subsequently disclaimed claims 1, 9, and 11–15 of the
`’019 patent (Ex. 2016, 1), thus leaving only two grounds challenging
`(1) claim 2 as anticipated by McKay and (2) claims 3–5 as having been
`obvious over the combination of MacKay and Cipkowski remaining for
`resolution in the proceeding.
`In our Final Written Decision, issued February 9, 2018, we construed
`the term “device” and the first “wherein” clause of claim 1. FWD 7–17.
`Applying these constructions to the remaining two grounds at issue, we
`found that Petitioner had demonstrated that claim 2 is anticipated by
`MacKay but that Petitioner had failed to demonstrate that the subject matter
`of claims 3–5 would have been obvious over the combined disclosures of
`MacKay and Cipkowski. Id. at 17–25.
`
`2
`
`
`
`IPR2016-01502
`Patent 6,548,019 B1
`On April 12, 2018, Petitioner filed a Notice of Appeal with the Court
`of Appeals for the Federal Circuit.1 Paper 40. On April 24, 2018, while the
`appeal was pending, the Supreme Court held in SAS Institute, Inc. v. Iancu,
`138 S.Ct. 1348, 1355 (2018) that the Board must decide the patentability of
`all the claims challenged in the petition in an instituted trial.
`On October 29, 2019, the Federal Circuit issued a decision affirming
`our construction of the first “wherein” clause of claim 1. Ex. 3001, 2, 9. In
`view of the intervening Supreme Court decision in SAS, however, the
`Federal Circuit vacated the remainder of the Final Written Decision and
`remanded the case for the Board to review “all claims and grounds included
`in the petition and issue a complete and final written decision” addressing
`the non-instituted claims and grounds. Id. at 10. The Federal Circuit’s
`mandate issued on December 9, 2019. Ex. 3002, 1.
`On January 15, 2020, a telephone conference was conducted with
`counsel for the parties and Judges Tornquist, Crumbley, and McGraw. On
`the call, the parties agreed that additional briefing is required in this case and
`that any such briefing should be limited to addressing the non-instituted
`grounds. The parties also ultimately agreed that the Board’s standard filing
`procedure should be used (i.e., a Patent Owner Response, a Reply, and a
`Sur-reply) and that an abbreviated filing timeline would be acceptable.
`Upon consideration of the parties’ arguments, we find good cause
`exists to permit briefing with respect to all non-instituted grounds set forth in
`the Petition. Patent Owner’s Response shall be limited to 9,000 words;
`Petitioner’s Reply shall be limited to 5,600 words; and Patent Owner’s Sur-
`
`
`1 On April 27, 2018, Patent Owner filed a Notice of Cross-Appeal.
`Paper 41. This cross-appeal was voluntarily dismissed.
`
`3
`
`
`
`Petitioner’s Reply (5,600 words)
`
`Patent Owner’s Sur-reply (5,600 words)
`
`Motions to exclude evidence; requests for
`oral argument
`
`IPR2016-01502
`Patent 6,548,019 B1
`reply shall be limited to 5,600 words. The guidelines set forth in the Board’s
`Consolidated Trial Practice Guide and the following Remand Schedule will
`apply to this remanded proceeding. The due dates for the parties’
`submissions are set forth in the table below:
`Action
`Patent Owner’s Response (9,000 words)
`
`Due Date
`On or before March 15,
`2020.
`One month after the filing
`of Patent Owner’s
`Response.
`Two weeks after the filing
`of Petitioner’s Reply.
`Two weeks after the filing
`of Patent Owner’s Sur-
`reply.
`Oppositions to motions to exclude evidence One week after the filing of
`the corresponding motions
`to exclude evidence.
`One week after the filing of
`the corresponding
`oppositions to the motions
`to exclude evidence.
`To be determined, but
`generally within one month
`of the requests for oral
`argument, if granted.
`
`Replies to motions to exclude evidence
`
`Oral Argument
`
`
`
`
`
`In consideration of the foregoing, it is:
`ORDERED that trial is instituted as to all grounds set forth in the
`Petition;
`FURTHER ORDERED that the parties’ briefing on remand shall be
`limited to addressing the non-instituted grounds and the challenged claims
`remaining in the ’019 patent; and
`FURTHER ORDERED that briefing shall proceed as outlined herein.
`
`4
`
`
`
`IPR2016-01502
`Patent 6,548,019 B1
`PETITIONER:
`Amanda Hollis
`Kourtney Baltzer
`KIRKLAND & ELLIS LLP
`amanda.hollis@kirkland.com
`kourtney.baltzer@kirkland.com
`
`
`
`PATENT OWNER:
`Joseph Jennings
`Jared Bunker
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2jfj@knobbe.com
`2jcb@knobbe.com
`
`
`
`
`
`
`
`5
`
`
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