Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 10
`Entered: February 26, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`BIOFRONTERA INCORPORATED, BIOFRONTERA BIOSCIENCE
`GMBH, BIOFRONTERA PHARMA GMBH, and BIOFRONTERA AG
`Petitioner,
`
`v.
`
`DUSA PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01585
`Patent 8,216,289 B2
`____________
`
`
`
`Before WILLIAM M. FINK, Vice Chief Administrative Patent Judge, and
`WILLIAM V. SAINDON and STEVEN M. AMUNDSON, Administrative
`Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 10
`Entered: February 26, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`BIOFRONTERA INCORPORATED, BIOFRONTERA BIOSCIENCE
`GMBH, BIOFRONTERA PHARMA GMBH, and BIOFRONTERA AG
`Petitioner,
`
`v.
`
`DUSA PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01585
`Patent 8,216,289 B2
`____________
`
`
`
`Before WILLIAM M. FINK, Vice Chief Administrative Patent Judge, and
`WILLIAM V. SAINDON and STEVEN M. AMUNDSON, Administrative
`Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`
`I.
`INTRODUCTION
`Biofrontera Incorporated, et al. (“Petitioner”) filed a petition
`requesting inter partes review of claims 1–19 of U.S. Patent No. 8,216,289
`B2 (Ex. 1001, “the ’289 patent”). Paper 1 (“Pet.”). DUSA Pharmaceuticals,
`Inc. (“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim.
`Resp.”).
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition and the Preliminary Response shows that “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; see also 37 C.F.R.
`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Taking
`into account the arguments presented in the Petition and Preliminary
`Response, we conclude that the information presented in the Petition does
`not establish a reasonable likelihood that Petitioner would prevail with
`respect to the challenged claims for a substantial majority of claims and
`grounds. Based on the particular facts of this case, we exercise our
`discretion to decline institution.
`
`A. Related Matters
`The parties identify the following matters related to the ’289 patent
`(Pet. 2; Paper 4; Ex. 1003):
`DUSA Pharmaceuticals, Inc. v. Biofrontera Inc. et al., Civil Action
`No. 1:18-cv-10568 (D. Mass.).
`
`2
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`Related U.S. Patent No. 9,723,991, which claims priority to the same
`original parent application as the ’289 patent, has been challenged in inter
`partes review no. IPR2018-01586.
`
`B. Real Parties-In-Interest
`Petitioner identifies Biofrontera Incorporated, Biofrontera Bioscience
`GmbH, Biofrontera Pharma GmbH, and Biofrontera AG as real parties-in-
`interest. Pet. 1. Patent Owner identifies DUSA Pharmaceuticals Inc., Sun
`Pharmaceuticals Industries, Inc., and Sun Pharmaceutical Industries, Ltd., as
`real parties-in-interest. Paper 4.
`
`C. The ’289 Patent
`The ’289 patent is directed to an illuminator that produces more
`uniform visible light over a contoured surface for use in photodynamic
`therapy (PDT) or photodynamic diagnosis (PD). Ex. 1001, 2:42–51. As
`explained in the ’289 patent, it is desirable to have an illuminator that
`produces visible light of sufficient uniformity and intensity to activate the
`photoactivatable agent for optimal therapeutic efficiency. Id. at 2:24–39.
`Addressing this issue, the ’289 patent describes an illuminator with light
`sources that conform to the contoured surface, and a housing that supports
`the light sources in this configuration. Id. at 3:1–6. Specifically, the light
`sources comprise “U-shaped fluorescent tubes that are driven by electronic
`ballasts.” Id., Abstract. “The tubes are supported by a sheet-metal or plastic
`housing,” and there is “[a]n aluminum reflector located behind the tubes
`[that] increases both the output irradiance and the uniformity of the output
`distribution.” Id. In addition:
`The spacing of the U-shaped tubes is varied to increase the output
`at the edges of the illuminator to make the output more uniform.
`
`3
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`Also, different portions of the tubes are cooled at different
`amounts, to improve uniformity. A light sensor monitors output
`from the U-shaped tubes to provide a signal for adjusting the
`output from the tubes.
`Id.; see also Figure 1 (showing a cross-section of the illuminator).
`
`D. Challenged Claims
`Petitioner challenges claims 1–19 of the ’289 patent. Sole
`independent claim 1 is reproduced below.
`1. A method of photodynamically diagnosing or treating a
`patient, comprising:
`
`illuminating the patient with an illuminator whose measured
` output over an active emitting area is at least 60% of the
` measured maximum over all operation distances.
`
`
`
`E. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–19 would have been unpatentable on
`the following grounds.
`Reference(s)
`
`Claims Challenged
`
`Rowland1
`Rowland and the knowledge of a
`person of ordinary skill in the art
`(“POSA”)
`Rowland, Lundahl,2 and knowledge
`of POSA
`
`35 U.S.C.
`Basis
`§ 102
`§ 103
`
`1, 2, 10, 12, and 16–19
`1, 2, and 4–19
`
`§ 103
`
`4–15
`
`
`1 International PCT Publication No. WO 90/00420, pub. Jan 25, 1990 (Ex.
`1009).
`2 Stuart L. Marcus, M.D., Ph.D. et al., Photodynamic Therapy (PDT) and
`Photodiagnosis (PD) Using Endogenous Photosensitization Induced by 5-
`Aminolevulinic Acid (ALA): Current Clinical and Development Status,
`Journal of Clinical Laser Medicine & Surgery, Vol. 14, No. 2, 59–66 (1996)
`(Ex. 1010).
`
`4
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`Reference(s)
`
`Levin3
`Levin and knowledge of POSA
`Levin, Lundahl, and knowledge of
`POSA
`Bower4 and knowledge of POSA
`Bower, Lundahl, and knowledge of
`POSA
`Pet. 3–4.
`
`35 U.S.C.
`Basis
`§ 102
`§ 103
`§ 103
`
`Claims Challenged
`
`1–3, 12, and 16–19
`1–19
`4–15
`
`§ 103
`§ 103
`
`1, 2, and 4–19
`4–15
`
`II. PATENTABILITY ANALYSIS
`
`A. Claim Construction
`The parties filed a motion to request that we apply a district court-type
`claim construction approach because the ’289 patent expired on May 1,
`2018. Paper 6; see In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012)
`(“[T]he Board’s review of the claims of an expired patent is similar to that of
`a district court’s review.”). Because the patent is expired, we grant the
`parties’ motion.
`Petitioner proposes a construction for the term “illuminator,” found in
`claims 1–6 and 16–19. Pet. 13–15. Patent Owner argues, and we agree, that
`“construing the term is not necessary to resolve any disputes.” Prelim. Resp.
`3. Indeed, we need not resolve any claim construction issues for purposes of
`determining whether to institute review, and we do not construe any claim
`terms at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to
`
`3 U.S. Patent No. 4,103,175, iss. July 25, 1978 (Ex. 1011).
`4 International PCT Publication No. WO 93/21842, pub. November 11, 1993
`(Ex. 1012).
`
`5
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`be construed, and only to the extent necessary to resolve the controversy);
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes
`review).
`
`B. The Rowland Anticipation Ground
`(Claims 1, 2, 10, 12, and 16–19)
`Claim 1 of the ’289 patent requires an illuminator that produces, at all
`operation distances, an output of at least 60% of a maximum output.
`Petitioner directs our attention to Rowland’s Figure 1:
`
`
`Figure 1 of Rowland discloses a device for uniformly irradiating an
`area of a surface. Ex. 1009, Abstract. Laser light is received from optical
`fiber 7 and is dispersed by diffuser 11 within generally hemispherical shell
`3, which is coated with reflector 5. Id. Because shell 3 is held on the
`treatment surface, the light from fiber 7 is trapped within and uniform
`distribution of the light from fiber 7 is achieved under the shell. Id.
`
`6
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`Petitioner asserts that because Rowland provides substantial
`uniformity of light, then the measured output of the device is within 60% of
`the measured maximum “for any distance.” Pet. 24 (citing Ex. 1004 ¶ 88).
`Patent Owner argues that Petitioner never identifies “all operation distances”
`or “the measured maximum.” Prelim. Resp. 20. A terse analysis is not fatal
`per se, however. Claim construction and claim mapping may be apparent
`when reviewing the contents of the Petition.
`It is not apparent to us, however, how Petitioner is reading the claims
`on Rowland. Petitioner asserts that because Rowland’s output is
`substantially uniform at any distance used, the output would be within 60%
`of the maximum. This assertion is based on Dr. Bigio’s declaration, Ex.
`1004 ¶ 88, which contains neither supporting evidence nor analysis by
`comparison to a maximum “over an active emitting area” or an explanation
`of what the recited “operation distance” is. For example, is the relevant
`distance a length along the treated surface, or a distance from some location
`on the emitting device? Which location(s) and at what distance(s)?
`Although it is common that claims may be broad and may read on an array
`of different prior art structures, the difficulty here is that we do not see any
`particular path showing how Petitioner believes that the claim reads on the
`prior art. In effect, the ground is an invitation to construe the claim and then
`to read the claim on the prior art. Petitioner has neither construed the claim
`nor specified how the claim reads on the art with sufficient clarity to allow
`us to understand the alleged basis of unpatentability.5 See 37 C.F.R.
`
`
`5 In the related district court litigation, Petitioner is asserting that claim 1 of
`the ’289 patent is indefinite. Ex. 2004. Accordingly, Petitioner’s vague
`claim mapping may be a result of its good faith belief in its litigation
`
`7
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`§ 42.104(b)(4) (“The petition must specify where each element of the claim
`is found in the prior art patents or printed publications relied upon.”). We
`decline the invitation to map the art to the claim with sufficient specificity in
`the first instance here. Accordingly, we decline institution of the Rowland
`anticipation ground.
`
`C. The Rowland-POSA Obviousness Ground
`(Claims 1, 2, and 4–19)
`Petitioner’s entire discussion of this ground as to claim 1 is
`reproduced below:
`Rowland discloses claim 1(a) for the same reasons as
`claim 1(a) in Section V.A. Ex. 1004 at ¶ 135-137. To the extent
`Rowland does not expressly disclose the 60% limitation of claim
`1(a), the limitation would have been obvious in view of the
`knowledge of a POSITA given the design of the shell and
`Rowland’s teachings about substantial uniformity, including its
`design to reflect all light from its shell to create “substantially
`uniform illumination of the surface.” Id. at 4:5–11; Ex. 1004 at
`¶ 138-142.
`Pet. 27. Petitioner’s cross-reference to “Section V.A.” is to the anticipation
`ground just addressed.
`In this ground, Petitioner merely concludes that, to the extent the
`“60% limitation” is not express, it would have been obvious. This assertion
`does little to address the shortcomings identified above, however.
`Obviousness grounds cannot be sustained by mere conclusory statements.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Because Petitioner
`never explains what the “operation distance” is in Rowland, we cannot
`determine whether the 60% limitation would have been obvious or not. This
`
`
`position. Regardless, we decline to make Petitioner’s case for it.
`
`8
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`deficiency applies to the remaining claims of the ground. See Pet. 27–32.
`Accordingly, we determine that Petitioner has not established a reasonable
`likelihood of success in its Rowland-POSA ground.
`
`D. The Levin-POSA Obviousness Ground
`(Claims 1–19)
`As we stated above, claim 1 of the ’289 patent requires an illuminator
`that produces, at all operation distances, an output of at least 60% of a
`maximum output. Petitioner asserts that if Levin does not disclose “specific
`operation distances,” a POSA would “use whatever operation distances
`appropriate for treatment.” Pet. 44. But the claim is not a method requiring
`a step of operating over various distances. The claim is directed to a method
`of illuminating with a particular illuminator, one whose output meets certain
`criteria. As with the Rowland-POSA ground, Petitioner’s assertion here,
`that it would have been obvious to “use whatever operational distances,”
`does not explain sufficiently how the prior art is mapped to the claim or the
`reasoning for why the subject matter of the claim would have been obvious.
`This deficiency applies to the remainder of the claims in the ground. See
`Pet. 27–32. Accordingly, we determine that Petitioner has not established a
`reasonable likelihood of success in its Levin-POSA ground.
`
`E. The Bower-POSA Obviousness Ground
`(Claims 1, 2, 4–19)
`In the Bower-POSA ground, Petitioner appears to have two different
`approaches for how Bower satisfies the limitation in claim 1. First,
`Petitioner asserts that the contoured array of LEDs in Bower “has uniform
`power density of approximately 86% at distances of 5 cm and 10 cm in the
`X and Y plane at any particular distance.” Pet. 55–56 (citing, e.g., Ex. 1012,
`
`9
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`Fig. 12). It is not clear how Petitioner is addressing the limitation of claim 1
`requiring “at least 60% of the measured maximum over all operation
`distances.” Petitioner here does not identify what would be the maximum or
`the operation distances relative to the XY plane (if that is its position), and it
`is not clear to us how Petitioner is applying the limitations to the art.
`Petitioner continues its ground by stating that, “[t]o the extent not
`disclosed by Bower expressly, a POSITA would have known how to design
`an illuminator generally conforming to a contoured surface . . . with a
`uniform power density of approximately 86%.” Pet. 56. Petitioner goes on
`to state that a POSA:
`would have achieved that uniform irradiance at distances of 2
`inches, 4 inches, or distances in between 2 and 4 inches in the
`XY plane or axially, particularly in view of Bower’s teaching
`that the LED arrays may be any shape or size, and would have
`been motivated to do so as appropriate and necessary for
`treatment.
`Id. at 56–57.
`As with the other obviousness grounds, it is not clear to us why the
`Petitioner believes that the claimed subject matter would have been obvious
`in light of Bower and the knowledge of POSA. For example, the claim
`requires the illuminator to emit an output of 60% of the measured maximum
`output at all operation distances. This would seemingly involve a
`comparison of the maximum output as well as values representing outputs
`measured at relevant operation distances from the illuminator. The Petition,
`however, focuses on uniform power density in an XY plane, rather than a
`comparison of outputs to the maximum output at relevant operation
`distances. This deficiency applies to the remainder of the claims in the
`
`10
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`ground. See Pet. 57–61. Accordingly, we determine that Petitioner has not
`established a reasonable likelihood of success on its Bower-POSA ground.
`
`F. The Rowland-Lundahl-POSA Obviousness Ground,
`The Levin-Lundahl-POSA Obviousness Ground, and
`The Bower-Lundahl-POSA Obviousness Ground
`(Claims 4–15)
`Claims 4–15 depend from claim 1. These grounds do not address the
`underlying deficiencies noted in the above grounds. Accordingly, we
`determine that Petitioner has not established a reasonable likelihood of
`success on these grounds.
`
`G. The Levin Anticipation Ground
`(Claims 1–3, 12, and 16–19)
`Our analysis of this ground is a useful counterpoint to our analysis of
`the Rowland anticipation ground. Levin describes a hexagonal phototherapy
`chamber for a patient to stand in. See, e.g., Ex. 1011, Fig. 1, Abstract.
`Petitioner identifies a teaching in Levin that “there is substantial uniformity
`[of light] in the chamber and that all measurements are within plus or minus
`25% of the average measurement.” Pet. 41 (citing Ex. 1011, 6:1–4).
`Because the patient is subjected to light within an enclosed chamber, that
`chamber defines all operation locations, i.e., all locations at which the
`patient can be subjected to light. See Pet. 40 (“As shown in Figure 6 and
`Table I below, the output at the center (points A, B, C, and D) is at least 85%
`of the maximum value.” (citing Ex. 1011, Fig. 6, 5:25–36)). Further,
`Petitioner’s expert explains how plus/minus 25% of the average means that
`all values are within 60%. Ex. 1004 ¶ 337 (cited at Pet. 41). Thus, because
`all operative locations in that chamber receive a “substantial uniformity” of
`light, there is uniformity across all operation distances.
`
`11
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`The Rowland ground was deficient because Petitioner did not give us
`a path to pair claim limitations with features in the art. Here, however, there
`appears to be only one way to pair the claims and Levin’s features. As such,
`Patent Owner’s arguments—its only arguments—that Petitioner does not
`explicitly identify “all operation distances” and “the measured maximum”
`are not persuasive here. See Prelim. Resp. 24–25. Levin specifies that there
`is uniformity of light throughout the chamber, which is the only place a
`person would be to receive treatment. Ex. 1011, 6:1–4, 18–21. Reviewing
`Petitioner’s ground and Patent Owner’s Preliminary Response, we determine
`that Petitioner has shown a reasonable likelihood that claim 1 is anticipated
`by Levin.6
`Dependent claims 2 and 16–19 require output within 70% of the
`maximum at various distances. Petitioner asserts that Levin discloses 85%
`uniformity at certain locations in the middle of the chamber. Pet. 42 (citing
`Ex. 1004 ¶¶ 329–338); id. at 43 (addressing claims 16–19 by referring back
`to the claim 2 analysis). Here, we agree with Patent Owner’s prior argument
`that Petitioner’s failure to provide a claim construction or more explicit
`claim mapping is fatal. See Prelim. Resp. 24–25. Petitioner measures from
`the center of Levin’s hexagonal chamber. Ex. 1004 ¶¶ 342 (“the irradiance
`output at the center . . . is at least 85% of the maximum value”), 344
`(similarly for “the 8-inch radius of circle EFGH”); see also Ex. 1011, 5:14–
`
`
`6 Our finding here does not impact our finding with respect to the Levin-
`POSA obviousness ground, in which Petitioner and its declarant, Dr. Bigio,
`assert, without support, that “[t]o the extent Levin does not expressly
`disclose specific operation distances, a POSITA . . . would have been
`motivated to use whatever operation distances appropriate for treatment.”
`Pet. 44; Ex. 1004 ¶ 407.
`
`12
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`19 (explaining that points ABCD are in the center and EFGH are measured 8
`inches from the center), Fig. 6. Thus, Petitioner implicitly construes
`“distances of” 2 or 4 inches to be measured out from the centerline of a
`regular-shaped irradiation chamber. But Petitioner gives no explanation for
`why that is what the claims require. Further, this construction seems
`doubtful, as the claims are discussing output from an illuminator, which
`would imply distance from the light source. For example, and although not
`necessarily limiting, the ’289 patent describes a U-shaped device; it is not
`clear how one would measure distance from a centerline analogous to
`Levin’s in that instance. See Ex. 1001, Fig. 1. Reviewing the ground, we
`are not persuaded Petitioner has shown a reasonable likelihood of success
`with respect to claims 2 and 16–19.7
`Dependent claims 3 and 12 require fluorescent tubes and treating
`psoriasis, respectively, both of which Petitioner asserts are explicitly
`discussed in Levin. Pet. 42–43. Reviewing the cited portions of Levin, we
`determine that Petitioner has shown a reasonable likelihood of success for
`claims 3 and 12.
`
`
`7 If we were to institute trial and construe this claim, it is possible that, given
`Levin’s disclosure of uniformity within the chamber, the claims would read
`on Levin. However, we do not construe the claims nor institute a trial here,
`such that there is no reason to evaluate whether Petitioner would meet the
`reasonable likelihood threshold under a claim construction other than the
`one implied by Petitioner in this ground.
`
`13
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`III. PATENT OWNER’S 35 U.S.C. § 325(d) ARGUMENT
`Patent Owner argues that we should deny institution under 35 U.S.C.
`§ 325(d). Prelim. Resp. 8–17. This argument is moot in view of our 35
`U.S.C. § 314(a) analysis below.
`
`IV. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a)
`We are permitted, but never required, to institute inter partes review
`when a petitioner meets the threshold for institution. 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.”);
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)
`(explaining that, under § 314(a), “the PTO is permitted, but never
`compelled, to institute an IPR proceeding”). A partial institution focusing
`only on grounds or claims having a reasonable likelihood of success is not
`an option. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“Nothing
`suggests the Director enjoys a license to depart from the petition and
`institute a different inter partes review of his own design.”); PGS
`Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (“Equal
`treatment of claims and grounds for institution purposes has pervasive
`support in SAS.”). Although Petitioner has met the statutory threshold for
`institution under 35 U.S.C. § 314(a), we decline to institute.
`As we determined in our analysis of the grounds above, Petitioner has
`established a reasonable likelihood of success on only 1 of 8 grounds. If we
`were to institute a trial, Petitioner currently stands reasonably likely to have
`3 claims held unpatentable, including the sole independent claim, but does
`not have a reasonable likelihood for the remaining 16 claims. Although we
`do not look strictly at precise percentages of institutable grounds and/or
`
`14
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`claims, this case presents a clear instance where the benefits of holding a
`trial to resolve the challenges having a reasonable likelihood would be
`overwhelmed by the burden of addressing the challenges having no
`reasonable likelihood. In conclusion, we exercise our discretion not to
`institute because institution would not serve the just, speedy, and
`inexpensive resolution of the parties’ dispute, or of inter partes reviews as a
`whole. See SAS Q&As, Part D, Effect of SAS on Future Challenges that
`Could Be Denied for Statutory Reasons (June 5, 2018), available at
`https://www.uspto.gov/sites/default/files/documents/sas_qas_20180605.pdf
`(“[T]he panel will evaluate the challenges and determine whether, in the
`interests of efficient administration of the Office and integrity of the patent
`system . . . the entire petition should be denied under 35 USC § 314(a).”);
`37 C.F.R. § 42.1(b) (“This part shall be construed to secure the just, speedy,
`and inexpensive resolution of every proceeding.”); see also, e.g., Deeper,
`UAB v. Vexilar, Inc., Case IPR2018-01310, slip op. at 42 (PTAB Jan. 24,
`2019) (Paper 7) (denying institution in a similar situation upon consideration
`of Rule 42.1(b)).
`
`V. CONCLUSION
`We have determined that Petitioner has shown a reasonable likelihood
`that claims 1, 3, and 12 are anticipated by Levin. But Petitioner has not
`shown a reasonable likelihood that claims 2 or 16–19 are anticipated by
`Levin, or that any other of claims 1–19 are reasonably likely unpatentable as
`anticipated by Rowland or obvious in view of various combinations offered
`based on Rowland, Levin, or Bower. For the reasons set forth above, we do
`not institute under 35 U.S.C. § 314(a) because partial institution is not
`
`15
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`available and full institution would not serve the just, speedy, and efficient
`administration of this proceeding or of the Office.
`
`VI. ORDER
`In view of the foregoing, it is hereby:
`ORDERED that we exercise our discretion not to institute an inter
`partes review of the ’289 patent under 35 U.S.C. § 314(a).
`
`
`
`
`
`
`16
`
`
`
`IPR2018-01585
`Patent 8,216,289 B2
`For Petitioner:
`
`Rachelle Thompson
`George Davis
`McGUIRE WOODS LLP
`rthompson@mcguirewoods.com
`gdavis@mcguirewoods.com
`
`
`For Patent Owner:
`
`Walter Renner
`Stuart Nelson
`FISH & RICHARDSON P.C.
`Axf-ptab@fr.com
`snelson@fr.com
`
`
`
`17
`
`
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