Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper No. 7
`Entered: May 14, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`____________
`
`IPR2020-00209
`Patent 10,213,113 B2
`___________
`
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`Supplemental Briefing on 35 U.S.C. § 325(d)
`37 C.F.R. § 42.5(a)
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper No. 7
`Entered: May 14, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`____________
`
`IPR2020-00209
`Patent 10,213,113 B2
`___________
`
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`Supplemental Briefing on 35 U.S.C. § 325(d)
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`IPR2020-00209
`Patent 10,213,113 B2
`
`
`INTRODUCTION
`I.
`Petitioner, Apple, Inc., filed a Petition in this case on December 11,
`2019, challenging claims 1 and 22 of U.S. Patent No. 10,213,113 B2
`(Ex. 1001, “the ’113 patent”), owned by Omni MedSci, Inc. Paper 1
`(“Pet.”). Patent Owner filed a Preliminary Response on March 19, 2020.
`Paper 6 (“Prelim. Resp.”).
`Petitioner and Patent Owner each set forth that Lisogurski,1 one of the
`two references asserted by Petitioner in its grounds for the unpatentability of
`the challenged claims, was before the Examiner in an Information
`Disclosure Statement (IDS) which the Examiner considered. Pet. 17–18
`(citing Ex. 1002, 164, 166); Prelim. Resp. 1, 11 (citing Ex. 1002, 164–206).
`Patent Owner additionally states that an invalidity claim chart prepared by
`Petitioner regarding the application of Lisogurski to certain claims in related
`patents was also filed in an IDS and considered by the Examiner. Prelim.
`Resp. 11 (citing Ex. 1002, 201 (Electronic Acknowledgement Receipt for
`“Exhibit_P.PDF”), 164–206; Ex. 2022).
`Petitioner argues that we should not deny institution under 35 U.S.C.
`§ 325(d) as Lisogurski was not discussed by the Examiner and received only
`“cursory consideration.” Pet. 17–18 (quoting Intex Recreation Corp. v.
`Team Worldwide Corp., IPR2018-00871, Paper 14, at 13 (PTAB Sept. 14,
`2018)). In its Preliminary Response, Patent Owner argues that the Board
`should apply its discretion under 35 U.S.C. § 325(d) to deny institution of
`the requested proceeding because the Examiner considered Lisogurski and,
`additionally, the invalidity claim chart which mapped Lisogurski to claims
`
`
`1 Lisogurski et al., US Patent No. 9,241,676 B2 (issued Jan. 26, 2016) (Ex.
`1011).
`
`2
`
`
`
`IPR2020-00209
`Patent 10,213,113 B2
`
`with similar limitations. Prelim. Resp. 13–23 (citing Becton, Dickinson &
`Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB
`Dec. 15, 2017) (precedential as to § III.C.5, first paragraph, designated Aug.
`2, 2019)). Patent Owner additionally argues that the second reference
`asserted by Petitioner is cumulative of Lisogurski. Id. at 1, 14–17, 22.
`On review of the parties’ submissions, we determine that it would be
`helpful to the Board for the parties to provide additional briefing on the
`applicability of § 325(d) to this case. In particular, we request that the
`parties address a decision made precedential after these filings by the parties:
`Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (designated precedential
`Mar. 24, 2020). The decision explains that the Board uses a two-part
`framework under § 325(d), specifically,
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and
`(2) if either condition of the first part of the framework is
`satisfied, whether the petitioner has demonstrated that the Office
`erred in a manner material to the patentability of challenged
`claims.
`Advanced Bionics, Paper 6 at 8. Under the first part of the framework,
`previously presented art includes “art made of record by the Examiner, and
`art provided to the Office by an applicant, such as on an Information
`Disclosure Statement (IDS), in the prosecution history of the challenged
`patent.” Id. at 7–8. Under the second part of the framework, a
`demonstration of Examiner material error “may include misapprehending or
`overlooking specific teachings of the relevant prior art where those teachings
`impact patentability of the challenged claims.” Id. at 8–9 n.9. And “[i]f
`
`3
`
`
`
`IPR2020-00209
`Patent 10,213,113 B2
`
`reasonable minds can disagree regarding the purported treatment of the art or
`arguments, it cannot be said that the Office erred in a manner material to
`patentability.” Id. at 9.
`
`Advanced Bionics also acknowledges that the Becton, Dickinson
`factors “provide useful insight into how to apply the framework under . . .
`§ 325(d).” Id. at 9 & n.10 (detailing the Becton, Dickinson factors). So we
`also encourage the parties to discuss any Becton, Dickinson factors relevant
`to the facts of this case. The parties may submit additional evidence from
`the prosecution history of the ’113 patent to support any facts asserted in the
`supplemental briefing. No other new evidence is permitted.
`
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner is authorized to file a reply to the
`Preliminary Response, no more than five (5) pages and limited to addressing
`the issue of discretionary denial under 35 U.S.C. § 325(d), by May 21, 2020;
`and it is
`FURTHER ORDERED that Patent Owner is authorized to file a
`sur-reply to Petitioner’s reply, no more than five (5) pages and limited to the
`issue of discretionary denial under 35 U.S.C. § 325(d), by May 28, 2020.
`
`
`
`4
`
`
`
`IPR2020-00209
`Patent 10,213,113 B2
`
`PETITIONER:
`
`Jeffrey P. Kushan
`Ching-Lee Fukuda
`Thomas A. Broughan III
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`clfukuda@sidley.com
`tbroughan@sidley.com
`
`
`PATENT OWNER:
`
`Thomas A. Lewry
`John S. LeRoy
`Robert C. J. Tuttle
`John M. Halan
`Christopher C. Smith
`Andrew B. Turner
`BROOKS KUSHMAN P.C
`tlewry@brookskushman.com
`jleroy@brookskushman.com
`rtuttle@brookskushman.com
`jhalan@brookskushman.com
`csmith@brookskushman.com
`aturner@brookskushman.com
`
`5
`
`
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
