CeramTec GmbHv.CeraMedic LLC

Patent Trial and Appeal Board

Dec 16, 2015

08727409 (P.T.A.B. Dec. 16, 2015)

Trials@uspto.gov Paper 23
571-272-7822 Entered: December 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CERAMTEC GMBH,
Petitioner,

v.
CERAMEDIC LLC,
Patent Owner.
____________

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Patent 6,066,584
____________

Before GRACE KARAFFA OBERMANN, KRISTINA M. KALAN, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.
KALAN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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I. INTRODUCTION
Petitioner CeramTec GmbH filed a Petition (Paper 2, “Pet.”) to
institute an inter partes review of claims 1–53 of U.S. Patent No. 6,066,584
(Ex. 1301, “the ’584 patent”) pursuant to 35 U.S.C. §§ 311–319. Patent
Owner CeraMedic LLC filed a Preliminary Response (Paper 13, “Prelim.
Resp.”). Petitioner, after obtaining Board authorization, filed a Reply (Paper
16, “Reply”). We have jurisdiction under 35 U.S.C. § 314. For the reasons
that follow, the Board does not institute an inter partes review.
II. BACKGROUND
A. Related Matters
The parties indicate that the ’584 patent is the subject of the following
district court proceeding, among others: CeraMedic, LLC v. CeramTec
GmbH, Civil Action No. 3:14-cv-01969 (N.D. Ind.). Pet. 1; Paper 6, 1. The
parties also indicate that the ’584 patent is the subject of an inter partes
review in IPR2015-00398 (the “398 IPR”) and in IPR2015-00424 (the “424
IPR”). Pet. 2; Paper 6, 1.1

1 Petitioner filed Petitions in the 398 IPR and the 424 IPR on December 12,
2014. 398 IPR, Paper 2; 424 IPR, Paper 2. The 398 IPR and the 424 IPR
involve the same Petitioner, Patent Owner, and patent, and relate to the same
underlying district court proceeding as the present Petition. The Petition in
the 398 IPR requested inter partes review of claims 1–5, 7–13, 15–17, 19–21,
23, 30–38, 52, and 53 of the ’584 patent. 398 IPR, Paper 2. The Petition in
the 424 IPR requested inter partes review of claims 14 and 26–29 of the ’584
patent. 424 IPR, Paper 2. On July 8, 2015, the Board instituted inter partes
review of claims 1–5, 7–13, 15–17, 19–21, 23, 30–38, 52, and 53 of the ’584
patent in the 398 IPR, and on July 7, 2015, the Board instituted inter partes
review of claims 14 and 26–29 of the ’584 patent in the 424 IPR. 398 IPR,
Paper 11; 424 IPR, Paper 9. The Board has not issued a final decision in the
398 IPR or the 424 IPR.
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B. The ’584 Patent
The ’584 patent, titled “Sintered Al2O3 Material, Process for its
Production and Use of the Material,” issued on May 23, 2000. The ’584
patent describes “sintered Al2O3 compositions produced from corundum
powder and also methods for the use of the invented compositions as medical
implants or tool material.” Ex. 1301, Abstract. An initially unsintered
precursor having a relative density of ρ 55% is produced from α-Al2O3
powder having defined properties using at least two different dispersing
methods. Id. The precursor is shaped or “treated” to create a shaped
unsintered body (id. at 5:61–62), and subsequently subjected to heat
treatment and sintering (id. at Abstract).
C. Illustrative Claim
Claim 1 of the ’584 patent is reproduced below:
1. A method, comprising the steps of:
a) dispersing α-Al2O3 powder having a mean particle size
d50 of 0.30 μm and a chemical purity of 99.9%
α-Al2O3 in an aqueous solution to create a mixture,
said mixture effected through the application of at least
two different dispersing methods;
b) treating said mixture so as to create a shaped unsintered
body having a relative density of p 55%;
c) heating said unsintered body; and
d) sintering said unsintered body so as to create a sintered
material.

Ex. 1301, 15:4–14.
D. Evidence Relied Upon by Petitioner
Petitioner relies on the following reference: WIPO Publication No.
WO 95/28364 to Krell and Blank (“the ’364 publication”). Ex. 1304. A
translation of the ’364 publication is provided as Exhibit 1305; all references
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in this Decision to the ’364 publication are to Exhibit 1305. Petitioner also
relies on the Declaration of David R. Clarke, Ph.D. Ex. 1316.
E. The Asserted Grounds
Petitioner challenges claims 1–53 of the ’584 patent on the ground that
claims 1–53 are anticipated by the ’364 publication under § 102(b). Pet. 3.2
F. Claim Construction
The Board interprets claims in an unexpired patent using the “broadest
reasonable construction in light of the specification of the patent in which
[they] appear[].” 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC,
778 F.3d 1271, 1281 (Fed. Cir. 2015) (“We conclude that Congress implicitly
adopted the broadest reasonable interpretation standard in enacting the
AIA.”). Under the broadest reasonable interpretation standard, claim terms
are given their ordinary and customary meaning in view of the specification,
as would be understood by one of ordinary skill in the art at the time of the
invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007).
Petitioner proposes that both the term “sintered Al2O3 material” in
claims 25–29 and the term “sintered material” in claims 1–24 and 30–53 be
construed to mean “sintered material with Al2O3 as a primary component.”
Pet. 9–10. Petitioner also argues that the “scope of the claims covers

2 Patent Owner represents that “[c]laims 1–5, 7–17, 19–21, 23, 26–38, 52,
and 53 of the ’584 Patent are the only claims still in force after CeraMedic’s
disclaimer of Claims 6, 18, 22, 24, 25, and 39–51 of the ’584 Patent.”
Prelim. Resp. 41 (citing Ex. 2329 (Disclaimer of claims 6, 18, 22, 24, 25, and
39–51 of the ’584 patent, filed September 18, 2015)). Patent Owner states:
“In effect, the Petition only challenges claims on which the Board has
previously instituted trial.” Id.

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materials having less than 95% Al2O3,” but does not propose a specific
construction. Id. at 11. Patent Owner does not advance an alternate
construction, stating instead that “CeraMedic has not presented all of its
claim construction and validity arguments in this preliminary response
because CeraMedic cannot present arguments that require expert testimony at
this stage of the proceeding.” Prelim. Resp. 43. At this stage in the
proceeding, we conclude that no term needs express construction.
III. ANALYSIS
A. The ’364 Publication
Petitioner argues that the ’364 publication is prior art against claims 1–
53 under 35 U.S.C. § 102(b). Pet. 14. The ’364 publication is a publication
of PCT/EP95/01474 (the “PCT application”) from which the ’584 patent
entered the U.S. national stage. Ex. 1301, 1. Petitioner argues that the claims
of the ’584 patent are unsupported by the specification of the PCT
application. Pet. 14. Thus, Petitioner argues, the reference date for the
§ 102(b) statutory bar is September 29, 1998, the date of an amendment to
the claims of the ’584 patent (“the September 1998 Amendment”). Id.
Patent Owner argues that the PCT application, which published as the ’364
publication, provides adequate written description for the challenged claims,
and, thus, the ’364 publication is not prior art with respect to the challenged
claims of the ’584 patent. Prelim. Resp. 23–40. We have reviewed the
parties’ assertions and supporting evidence, and, for the reasons discussed
below, are not persuaded that Petitioner demonstrates a reasonable likelihood
of prevailing in showing that the ’364 publication is available as § 102(b)
prior art.
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The PCT application was filed on April 19, 1995. The ’364
publication was published on October 26, 1995.3 The U.S. national stage
application was filed on January 31, 1997, and was amended at various stages
during prosecution. Ex. 1303 (the September 1998 Amendment); Ex. 1302,
241–72 (June 17, 1999 Amendment), 275–77 (Examiner’s Amendment).
The Non-Final Rejection mailed April 1, 1998 rejected claims 1–30 and 32 as
indefinite, indicating that claims 1–30 and 32 would be allowable if amended
and/or rewritten to overcome all of the indefiniteness rejections, and rejected
claims 31, 33, 34, and 35 under 35 U.S.C. § 101. Ex. 1302, 203–16. The
September 1998 Amendment cancelled claims 1–35 and proposed new
claims 36–75. Ex. 1303, 4–8. Original claims 1 and 6 contained the
language “[s]intered Al2O3 material having a content of from 95 to 100% by
volume of Al2O3”; the proposed new claims did not contain the “95% to
100% by volume of Al2O3” language of original claims 1 and 6. Id.
Petitioner argues that the original disclosure “unequivocally” limits the
scope of the invention to materials having at least 95% Al2O3 and methods of
making such materials.4 Pet. 16–30. Specifically, Petitioner argues that “the

3 Certain dates from the prosecution history are below:
EP Application filing date April 19, 1994
PCT/EP95/01474 filing date April 19, 1995
Pub. date of the ’364 publication October 26, 1995
§ 371 date January 31, 1997
September 1998 Amendment date September 29, 1998
Issue date of ’584 patent May 23, 2000

4 Certain claims of the ’584 patent (e.g., claims 1, 19, and 52) include a
limitation directed to the chemical purity, by percentage, of the α-Al2O3
starting materials; the primary dispute between the parties here relates to the
volume of Al2O3 in the sintered Al2O3 materials, not the purity of the starting
materials.
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specification [of the PCT application] disclaims a composite material with
less than 95% Al2O3.” Id. at 19. Petitioner argues that the originally
disclosed materials of the invention have at least 95% Al2O3, that the PCT
application specification “expressly” limits the scope of the invention to
sintered materials having at least 95% Al2O3, and that the specification
excludes from the scope of the invention composite materials having less
than 95% Al2O3. Id. at 16–20. By way of support for that allegation of
express disclaimer, however, Petitioner points to the specific embodiments in
the PCT application and the language of the original product claims. Id. at
20–22. Petitioner alleges that the specification’s “exclusive” focus on Al2O3
powder raw materials supports its arguments, and that the prior art materials
discussed in the specification were exclusively pure or almost pure Al2O3.
Id. at 22–26. Petitioner also argues that the originally disclosed processes of
the invention result in sintered Al2O3 materials having at least 95% Al2O3.
Id. at 26–30.
Patent Owner counters that the PCT application provides adequate
support for the challenged claims because it describes the materials based on
their mechanical properties, instead of their Al2O3 content percentage.
Prelim. Resp. 24. Specifically, Patent Owner argues that “[t]he entirety of
the specification of PCT/EP95/01474 includes portions that fully and directly
set forth ‘sintered materials’ and ‘sintered Al2O3 materials’ not characterized
by their percentage by volume of Al2O3 content, and processes for producing
those materials.” Id. at 25. Patent Owner presents charts correlating the
claims with the portions of the PCT application that support them. Id. at 25–
33. Patent Owner argues that the “inventors did not identify any particular
Al2O3 content by volume as an ‘essential’ feature of either the processes or
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the materials disclosed,” thereby distinguishing the present case from Gentry
Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998). Id. at
34. Patent Owner challenges Petitioner’s reliance on specific embodiments
and examples from the specification, as well as on any purported disclaimers.
Id. at 35–39. Patent Owner summarizes: “Absent a clear and unambiguous
disclaimer—and there is no clear and unambiguous disclaimer in
PCT/EP95/01474—Petitioner’s argument that PCT/EP95/01474 disclaims
and does not provide written description for ‘sintered materials’ and ‘sintered
Al2O3 materials’ not characterized by volume Al2O3 content must fail.” Id.
at 39.
Petitioner’s argument is not persuasive because the challenged claims
of the ’584 patent do not recite a specific volume Al2O3 content—and neither
the specification nor the prosecution history are shown to limit the plain
language of the claims, for example, by disclaimer of subject matter. See
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (in
arriving at the broadest reasonable interpretation, the Board reads the claim
language in light of the specification and the prosecution history); see also
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(“[T]he test for sufficiency is whether the disclosure . . . reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
subject matter.” (emphasis added)). Patent Owner has presented claim charts
showing where every element of the disputed product and method claims is
supported by the specification. Prelim. Resp. 25–33. Together with Patent
Owner’s arguments, the claim charts showing where every element of the
claims finds support in the specification is persuasive.
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We are not persuaded that the specification or the prosecution history
limits, by disclaimer, the plain language of the claims—which include no
express limitation on the Al2O3 content by volume of the sintered product.
The standard for disclaimer or disavowal is exacting. See Thorner v.
Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012).
Petitioner relies on Gentry Gallery for the proposition that when the
specification expressly states that the invention is of a particular
scope, claims broader than the indicated scope lack written description
support. Pet. 15. We are not persuaded by Petitioner’s argument that the
specification sections it cites—including the two instances in which the 95–
100% range is mentioned5 and the data recited in Examples 1–7—limit the
content by volume of Al2O3. Pet. 16–32. We have reviewed the Examples
and the cited portions of the specification and are not persuaded that they
disavow composites containing less than 95% by volume of Al2O3. The
specification describes a number of embodiments by their variables, and
describes exemplary ranges associated with the variables, but includes no
clear language disclaiming other ranges for those variables. Embodiments

5 The ’584 patent specification mentions the 95–100% range twice.
Ex. 1301, 3:45–51; 4:25–28. The first instance is: “The sintered Al2O3
materials of the invention having an Al2O3 content of from 95 to 100% by
volume and a Vickers low-load hardness of 2000 at a test load of from 10
N to 100 N (HV1 to HV10) have a relative sintered density of ρ 98.5%,
microstructures having mean grain sizes of 1.5 μm and a frequency of
inhomogeneities of <50x10+9 m-2.” Id. at 3:45–51. The second instance is:
“The further embodiment of the invention is characterized by a content of
from 95 to 100% by volume of Al2O3 and a Vickers low-load hardness
of 1750 at a test load of from 10 N to 100 N (HV1 to HV10) . . . .” Id.
at 4:25–28. The ’364 publication contains similar disclosures. Ex. 1305,
5:13–16, 6:19–20.
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appearing in a patent’s written description may not be imported as limitations
into the claims unless the specification makes clear that the patentee intends
for the claims and the embodiments in the specification to be strictly
coextensive. See JVW Enters., Inc. v. Interact Accessories, Inc., 424 F.3d
1324, 1335 (Fed. Cir. 2005). If the specification reveals “an intentional
disclaimer, or disavowal, of claim scope by the inventor,” the scope of the
claim, “as expressed in the specification, is regarded as dispositive.” Phillips
v. AWH Corp., 415 F. 3d 1303, 1316 (Fed. Cir. 2005) (citing SciMed Life
Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343– 44
(Fed. Cir. 2001)). The Phillips court, however, reminds us that persons of
ordinary skill in the art rarely confine their definitions of terms to the exact
representations depicted in the embodiments. Id. at 1323. In sum, the
specification does not unambiguously and expressly exclude composites
containing less than 95% by volume of Al2O3, as urged by Petitioner.
We are not persuaded by Petitioner’s argument that “the September
1998 Amendment broadening the claims beyond the scope of the invention
introduced new matter.” Pet. 31–32. Similarly, we are not persuaded by
Petitioner’s argument that the introduction of “new matter” by amendment of
the claims means necessarily that the ʼ584 patent claims only are entitled to a
September 29, 1998 filing date. Pet. 30. Although the MPEP is not binding
authority, we note that the MPEP states, “[i]f the originally filed disclosure
does not provide support for each claim limitation, or if an element which
applicant describes as essential or critical is not claimed, a new or amended
claim must be rejected under . . . 35 U.S.C. 112, para. 1, as lacking adequate
written description, or in the case of a priority or benefit claim under
35 U.S.C. 119, 120, 365, or 386, the priority or benefit claim must be
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denied.” MPEP § 2163(II)(A)(3)(b) (emphasis added). The Examiner
considered the PCT application during prosecution of the application leading
to the issued patent. Petitioner argues that the Examiner “failed to appreciate
the significant expansion in scope of the claims and did not object to the new
matter submitted in the September 1998 Amendment, perhaps because the
examination focused on other claim amendments made by the applicant at the
same time.” Pet. 8. Petitioner concludes: “Thus, the arguments presented
below regarding the lack of written description support in the PCT
Application for the Challenged Claims have not been previously considered
by the Patent Office.” Id.
The Examiner, however, did make a 35 U.S.C. § 112, first paragraph
objection during prosecution, after the September 1998 Amendment, directed
to a shortcoming in the specification. Ex. 1302, 230. We have no reason to
believe that the Examiner focused on some claim amendments to the
exclusion of others, or failed to appreciate 35 U.S.C. § 112, first paragraph
issues. Because the PCT application, and specifically the question of
whether the PCT application provides written description support for the
claim amendments made in the September 1998 Amendment, previously was
considered by the Patent Office, we are not persuaded by Petitioner’s
arguments that the Examiner failed to appreciate the “new matter” issue.
On this record, Petitioner fails to show sufficiently that the claims of
the ’584 patent are not entitled to a priority date earlier than September 28,
1999. Pet. 6, 14. The ’364 publication is not available as § 102(b) prior art,
and Petitioner is not reasonably likely to prevail at trial on a ground based on
that reference.
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B. Real Party-In-Interest
The statute governing inter partes review proceedings sets forth
requirements for a petition for inter partes review, including that “the petition
identif[y] all real parties in interest.” 35 U.S.C. § 312(a)(2); see also 37
C.F.R. § 42.8(b)(1) (requirement to identify real parties in interest in
mandatory notices). The Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,759 (Aug. 14, 2012) explains that at a general level, the real party-
in-interest is the party that desires review of the patent. Thus, the real party-
in-interest may be the petitioner itself, and/or it may be the real party or
parties at whose behest the petition has been filed. Id. As set forth below,
we find that Petitioner’s naming of itself as real party-in-interest allows us to
consider the merits of the present Petition.
Petitioner initially identified as real parties-in-interest itself as well as
the following: Biomet, Inc., Zimmer Holdings, Inc., Zimmer, Inc., Smith &
Nephew, Inc., and DePuy Orthopaedics, Inc. (“Petitioner’s Customers”).
Pet. 1. Subsequently, after obtaining leave from the Board, Petitioner filed
amended Mandatory Notices removing all named real parties-in-interest
except the Petitioner. Paper 7. 6

6 By way of background, the Petitions in the 398 IPR and the 424 IPR
initially identified only Petitioner as a real party-in-interest. 398 IPR, Paper
2, 1; 424 IPR, Paper 2, 1. Patent Owner’s Preliminary Responses in those
cases argued that Petitioner’s Customers should have been named as real
parties-in-interest. 398 IPR, Paper 7, 14–18; 424 IPR, Paper 6, 17–21.
Petitioner sought authorization from the Board to file amended Mandatory
Notices. 398 IPR, Paper 8; 424 IPR, Paper 7. Upon receiving permission
from the Board to update its Mandatory Notices, Petitioner added Petitioner’s
Customers as real parties-in-interest in the 398 IPR and the 424 IPR. 398
IPR, Paper 10; 424 IPR, Paper 8. Thus, the 398 IPR and the 424 IPR, on
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Patent Owner argues that the Board should deny institution for
Petitioner’s failure to name all real parties-in-interest. Prelim. Resp. 7–23.
Patent Owner argues that judicial estoppel precludes Petitioner from asserting
that Petitioner’s Customers are not real parties-in-interest. Id. at 8–14.
Specifically, Patent Owner argues that (1) Petitioner’s identification of itself
is clearly inconsistent with Petitioner’s real party-in-interest identification in
the 398 IPR and the 424 IPR (id. at 10–12); (2) the Board previously
accepted that both Petitioner and Petitioner’s Customers are the correct real
parties-in-interest in the 398 IPR and the 424 IPR (id. at 12–13); and (3)
Patent Owner would suffer prejudice if the Board did not hold Petitioner to
its real party-in-interest identifications in the 398 IPR and the 424 IPR (id.
at 13). Patent Owner also discusses the factors set forth in Taylor v. Sturgell,
553 U.S. 880 (2008), in arguing that Petitioner’s customers are real parties-
in-interest, particularly the first factor (“whether the third party agrees to be
bound by the determination of issues in the proceeding”), third factor
(“whether the third party is adequately represented by someone with the same
interests”), and fifth factor (“whether the third party is bound by a prior
decision and is attempting to rehear the matter through a proxy”). Prelim.
Resp. 14–18 (citing Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
Case IPR2013-00453, slip op. at 9 (PTAB Jan. 6, 2015) (Paper 88)). Finally,
Patent Owner argues that Petitioner’s alleged failure to identify all real
parties-in-interest is uncurable because Petitioner’s Customers are time-
barred under 35 U.S.C. § 315(b). Id. at 21–23.

which we have instituted inter partes review, name six real parties-in-
interest.
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Petitioner argues that Petitioner is the only real party-in-interest.
Reply 1–3. Specifically, Petitioner argues that none of Petitioner’s
Customers directed, funded, or controlled any aspect of the present IPR. Id.
at 1. Petitioner alleges that the “failure of Patent Owner to cite any evidence
of funding, direction, or control by the Customers is glaring,” as is Patent
Owner’s avoidance of the second and fourth Taylor factors. Id. at 2.
Petitioner argues that the first Taylor factor does not apply, because
Petitioner’s Customers have agreed to be bound in a different proceeding,
and that the fifth Taylor factor does not apply because Petitioner’s
Customers, who are time-barred, likely would be estopped as privies of
Petitioner. Id. at 2–3. Regarding the third Taylor factor, Petitioner argues
that Petitioner’s Customers are at most passive beneficiaries of Petitioner’s
efforts. Id. at 3. Finally, Petitioner argues that equitable considerations do
not favor application of judicial estoppel in this case. Id. at 5.
Petitioner, in support of its arguments, provides a declaration by Dr.
Franz Uppena, Ph.D., Head of Patents and Trademarks for CeramTec GmbH.
Ex. 1317; Reply 1. Dr. Uppena asserts that Petitioner pays all legal fees and
expenses relating to the present IPR, that Petitioner’s Customers have not
participated in the present IPR at all, and that Petitioner has the exclusive
right to control its conduct in this IPR. Ex. 1317 ¶¶ 5–9.
Based on the information presented, we are not persuaded that the first,
third, and fifth Taylor factors require that both Petitioner and Petitioner’s
Customers must be named as real parties-in-interest. We do not find that
totality of evidence, presented at this stage in the proceeding, tips the balance
of the Taylor factors in Patent Owner’s favor. In particular, having
considered the information presented by both parties at this stage of the
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proceeding, the record is insufficient to support a finding that the second
Taylor factor (“whether a pre-existing substantive legal relationship with the
party named in the proceeding justifies binding the third party”) or fourth
Taylor factor (“whether the third party exercised or could have exercised
control over the proceeding”) are met in this case. Atlanta Gas Light Co.,
slip op. at 9.
Furthermore, Patent Owner directs us to no statutory provision
establishing the Board’s authority to apply an equitable defense, such as
judicial estoppel. Regarding the Board’s authority to act, we are mindful that
“[a]n agency is but a creature of statute” and “[a]ny and all authority pursuant
to which an agency may act ultimately must be grounded in an express grant
from Congress.” Killip v. Office of Personnel Mgmt., 991 F.2d 1564, 1569
(Fed. Cir. 1991); see also Esselte Corp. v. Dymo, Case IPR2015-00779, slip
op. at 4–7 (PTAB Aug. 28, 2015) (Paper 13) (determining that 35 U.S.C.
§§ 311, 314– 316 do not provide assignor estoppel as a defense to inter
partes review). In any event, in inter partes review proceedings, the Office
generally will not look beyond the required statement identifying the real
party in interest. Atlanta Gas Light Co., slip op. at 7. We have not made any
determination about the identification of real parties-in-interest in the 398
IPR and the 424 IPR.
After consideration of the specific arguments presented to us, and on
the record before us, we conclude that our consideration of the Petition is not
barred by 35 U.S.C. § 312(a)(2) under these facts.
C. Conclusion
Based on the totality of circumstances before us in this case, we
conclude that we are able to consider the Petition under 35 U.S.C.
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§ 312(a)(2), but that Petitioner has not presented considerations that
sufficiently support its request for inter partes review of claims 1–53 of the
’584 patent.
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that inter partes review is denied as to all challenged
claims of the ’584 patent.

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FOR PETITIONER:

Gina N. Shishima
gina.shishima@nortonrosefulbright.com

Thomas Owens
tom.owens@nortonrosefulbright.com

Mark T. Garrett
mark.garrett@nortonrosefulbright.com

FOR PATENT OWNER:

Kevin K. McNish
kmcnish@desmaraisllp.com
John M. Desmarais
jdesmarais@desmaraisllp.com

Andrew G. Heinz
aheinz@desmaraisllp.com