Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper: 35
`Entered: June 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEXEON LTD.,
`Petitioner,
`
`v.
`
`ONED MATERIAL, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00851
`Patent 8,440,369 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`ORDER
`Extending One-Year Pendency for Good Cause
`35 U.S.C. § 316(a) and 37 C.F.R. § 42.100
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper: 35
`Entered: June 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEXEON LTD.,
`Petitioner,
`
`v.
`
`ONED MATERIAL, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00851
`Patent 8,440,369 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`ORDER
`Extending One-Year Pendency for Good Cause
`35 U.S.C. § 316(a) and 37 C.F.R. § 42.100
`
`
`
`
`
`IPR2017-00851
`Patent 8,440,369 B2
`
`
`
`On February 7, 2017, Nexeon Ltd. (“Petitioner”) filed a Petition
`(“Pet.”) to institute an inter partes review of claims 1–28 of U.S. Patent
`No. 8,440,369 B2 (“the ’369 patent,” Ex. 1001) with respect to the following
`grounds:
`Challenged Claims
`Basis
`Reference
`1–28
`§ 102(b)
`Niu
`1–28
`§ 102(b) or §102(a)
`Oyama
`9, 28
`§ 103(a)
`Oyama
`1–3, 5–7, 15–24, 26, 28
`§102(b) or § 102(a)
`Choi
`1, 9, 28
`§ 103(a)
`Choi
`§ 102(b) or § 102(e) 1–3, 5–8, 10, 13, 15–24, 26,
`Chow
`28
`§ 103(a)
`1, 28
`Chow
`1–3, 5–10, 13, 15–18, 20–
`§ 102(b)
`Debe
`23, 26, 28
`§ 103(a)
`1–28
`Debe
`§ 103(a)
`1–3, 5–8, 10, 15–24, 26, 28
`Yang
`Pet. 9–10. On August 25, 2017, upon finding that Petitioner demonstrated a
`reasonable likelihood that it would prevail on its challenge that at least one
`claim of the ’369 patent is unpatentable, we instituted an inter partes review
`of all challenged claims, but limited the proceeding to the following subset
`of grounds:
`
`2
`
`
`
`IPR2017-00851
`Patent 8,440,369 B2
`
`
`
`Challenged Claim(s)
`Basis
`Reference(s)
`1–28
`§ 102(b)
`Oyama
`9
`Oyama and Song § 103(a)
`Oyama, Shi,
`28
`§ 103(a)
`and/or Wang
`§ 102(b) or § 102(e) 1–3, 5–8, 10, 13, 15–24, 26,
`Chow
`28
`1–3, 5–10, 13, 15–18, 20–
`§ 102(b)
`Debe
`23, 26, 28
`1–3, 5–8, 10, 15–24, 26, 28
`§ 103(a)
`Yang and Lu
`Paper 7, 36–37. On April 27, 2018, we modified our institution decision to
`include review of “all challenged claims and all of the grounds presented in
`the Petition.” Paper 28, 2.
`Pursuant to 35 U.S.C. § 316(a)(11), “the final determination in an
`inter partes review [shall] be issued not later than 1 year after the date on
`which the Director notices the institution of a review under this chapter,
`except that the Director may, for good cause shown, extend the 1-year
`period by not more than 6 months . . . .” The Director delegated the
`authority to extend the one-year period to the Chief Administrative Patent
`Judge. See 37 C.F.R. § 42.100(c). In particular, 37 C.F.R. § 42.100(c)
`provides: “An inter partes review proceeding shall be administered such
`that pendency before the Board after institution is normally no more than
`one year. The time can be extended by up to six months for good cause by
`the Chief Administrative Patent Judge . . . .” The one-year period normally
`available to issue a Final Written Decision expires on August 25, 2018.
`On May, 21, 2018, with Board authorization (Paper 32), the parties
`filed a Joint Brief in Support of Good Cause to Extend the Schedule
`
`3
`
`
`
`IPR2017-00851
`Patent 8,440,369 B2
`
`
`(“J. Br.,” Paper 33). The parties note that there are five newly-instituted
`grounds, one of which (obviousness of claims 1–28 based on Debe) includes
`at least eight different combinations of prior art references. J. Br. 1–3. The
`parties also note that “the Petition contained four different obviousness
`permutations of Choi that also involved Debe, Wang, Meyer and Shi” as
`well as “different obviousness permutations of Chow based on Reynolds and
`Wang.” Id. at 4.
` Patent Owner, OneD Material, LLC., states that it “intends to prepare
`a full substantive response” for these newly-instituted grounds, which Patent
`Owner argues “will take considerable time and resources, in addition to
`responding to entirely new references [Patent Owner] has not yet analyze[d]
`substantively.” J. Br. 3–4. Patent Owner also notes that its Preliminary
`Response “raised only procedural issues” with respect to the newly-
`instituted grounds, and therefore Patent Owner has not previously prepared
`any substantive arguments as to those grounds. Id. at 5–6. Patent Owner
`argues that “it would be greatly prejudiced without at least three months to
`conduct expert discovery and prepare a substantive supplemental Patent
`Owner response to the grounds that are now subject to the proceedings as a
`result of the [Supreme Court’s] decision in SAS Inst.” Id. at 4. The parties
`argue that, although the requested additional discovery and briefing would
`extend the schedule past the one-year statutory deadline,1 “there is good
`cause to extend [it] in this extraordinary circumstance where the change in
`
`
`1 The parties included a proposed schedule with their Joint Brief. See J. Br.,
`Ex. A. We will issue an Extended Scheduling Order that sets forth the
`deadlines for and scope of the supplemental briefing in this case.
`
`4
`
`
`
`IPR2017-00851
`Patent 8,440,369 B2
`
`
`the law, the SAS decision, is putting entirely new grounds and new
`references at issue that were not previously.” Id. at 6.
`In light of the circumstances presented here, including the large
`number of newly-instituted grounds and prior art references encompassed
`therein, the Chief Administrative Patent Judge has determined that good
`cause exists to extend the one-year period for issuing a Final Written
`Decision here. Paper 34; 37 C.F.R § 42.100(c). Accordingly, the time to
`administer the present proceeding is extended by up to six months.
`It is therefore
`ORDERED that good cause exists to extend the time of pendency of
`this proceeding; and
`FURTHER ORDERED that this proceeding is extended by up to six
`months.
`
`
`
`
`5
`
`
`
`IPR2017-00851
`Patent 8,440,369 B2
`
`
`PETITIONER:
`S. Richard Carden
`James V. Suggs
`McDONNELL BOEHNEN
`HULBERT & BERGHOFF LLP
`carden@mbhb.com
`suggs@mbhb.com
`
`
`PATENT OWNER:
`
`Jennifer Hayes
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`
`
`
`
`
`
`6
`
`
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