On November 25, 2014, The Patent Trial and Appeal Board (PTAB) entered its final written decision in Sequenom, Inc., v. Board of Trustees of Leland Stanford Junior Univ. (IPR2013-00390, Paper No. 45. While Inter Partes Review was instituted on December 9, 2013, the PTAB ultimately decided that the Patent Owner established a prior reduction to practice of the invention as claimed in U.S. Patent No. 8,195,415 (the ’415 patent). In its petition, Sequenom, Inc. relied on Lo et al., U.S. Patent App. Pub. No. 2009/0029377 A1 (“Lo II”) in support of each instituted ground of unpatentability. However, Lo II was effectively antedated by evidence corroborating Patent Owner’s prior reduction to practice of the claimed invention. (Paper No. 45 at p. 5). As evidenced by this Decision, when a Petitioner rebuts evidence of an actual reduction to practice, the Petitioner should provide clear evidence to challenge the Patent Owner’s evidence: mere allegations are not enough.
In proceedings before the Patent Trials and Appeals Board (PTAB or Board), Patent Owners are allowed to propose substitute claims in the event that one or more claims is cancelled. 35 U.S.C. §§ 316(d)(1), 326(d)(1). As discussed in previous blog articles, the proposed claims are not entered automatically or subjected to examination. Respironics, Inc., v. Zoll Medical Corporation, p. 20 (IPR2013-00322, Paper No. 46, September 17, 2014). Rather, a Patent Owner has the burdens of proof to show that the proposed claims are both adequately supported by the specification and patentably distinct from prior art.
In Trivascular, Inc. v. Shaun L.W. Samuels (IPR2013-00493, Paper No. 45, December 3, 2014), the PTAB held that Trivascular (Petitioner) had not proved that any of the instituted claims in the inter partes review (IPR) of US Patent 6,007,575 are unpatentable. It is interesting to note that while the Patent Owner, Shaun L.W. Samuels , submitted two expert declarations, the Petitioner, Trivascular, did not submit an expert declaration.