Osteoplastics LLC

Patent Trials and Appeals BoardJun 4, 2021

IPR2021-00248 (P.T.A.B. Jun. 4, 2021)

Trials@uspto.gov Paper 12 571.272.7822 Date: June 4, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ MATERIALISE N.V., Petitioner, v. OSTEOPLASTICS, LLC, Patent Owner. _______________ IPR2021-00245 (Patent 9,330,206 B2) IPR2021-00246 (Patent 9,292,920 B2) IPR2021-00247 (Patent 9,672,617 B2) IPR2021-00248 (Patent 9,672,302 B2) IPR2021-00351 (Patent 8,781,557 B2) IPR2021-00352 (Patent 9,275,191 B2) IPR2021-00353 (Patent 9,626,756 B2)1 _______________ Before HYUN J. JUNG, ERIC C. JESCHKE, and ARTHUR M. PESLAK, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION Dismissal Prior to Institution of Trial 35 U.S.C. § 314 1 Because this Order addresses issues common to all seven proceedings, we issue one Order to be entered in each proceeding. The parties are not authorized to use this caption. IPR2021-00245 (Patent 9,330,206) IPR2021-00351 (Patent 8,781,557) IPR2021-00246 (Patent 9,292,920) IPR2021-00352 (Patent 9,275,191) IPR2021-00247 (Patent 9,672,617) IPR2021-00353 (Patent 9,626,756) IPR2021-00248 (Patent 9,672,302) 2 BACKGROUND In December 2020, Petitioner, Materialise N.V., filed seven petitions to institute inter partes review of certain claims in seven different patents owned by Patent Owner, Osteoplastics LLC. IPR2021-00245, Paper 2; IPR2021-00246, Paper 2; IPR2021-00247, Paper 2; IPR2021-00248, Paper 2; IPR2021-00351, Paper 2; IPR2021-00352, Paper 2; IPR2021-00353, Paper 2. Patent Owner timely filed a Preliminary Response in each proceeding. Paper 6.2 On June 3, 2021, with the Board’s prior authorization (Ex. 3002), Petitioner filed, in each proceeding, a Motion to Dismiss Petition for Inter Partes Review. Paper 11 (the “Motion” or “Mot.”). Upon consideration of the arguments presented and for the reasons below, we grant the Motions and dismiss the Petitions. DISCUSSION Petitioner states that each of these proceedings is “in its preliminary stage and the Board has not rendered a decision on institution.” Mot. 3. Petitioner contends that it is appropriate to grant the Motions and dismiss the Petitions “at this early juncture, to preserve the Board’s and parties’ resources and promote a speedy and inexpensive resolution to this dispute.” Mot. 3–4 (citing Samsung Elecs. Co. v. NVIDIA Corp., IPR2015-01270, Paper 11 at 3 (PTAB Dec. 9, 2015)). Petitioner highlights that “Patent Owner does not oppose the relief requested.” Mot. 2. 2 Similar papers were filed in each proceeding. For the remainder of this Order, we cite to papers in IPR2021-00245 only. IPR2021-00245 (Patent 9,330,206) IPR2021-00351 (Patent 8,781,557) IPR2021-00246 (Patent 9,292,920) IPR2021-00352 (Patent 9,275,191) IPR2021-00247 (Patent 9,672,617) IPR2021-00353 (Patent 9,626,756) IPR2021-00248 (Patent 9,672,302) 3 Under the applicable regulations, “[t]he Board may take up petitions or motions for decisions in any order, [and] may grant, deny, or dismiss any petition or motion.” 37 C.F.R. § 42.71(a) (2020). The due dates for the decisions on institution in these seven proceedings are quickly approaching, spanning from early June 2021 to early July 2021. See, e.g., Paper 6 (Patent Owner Preliminary Response, filed on March 10, 2021); see also 35 U.S.C. § 314(b) (setting the due date for the decision on institution at three months after the filing of a preliminary response). Although the Board has expended resources in its review of the Petitions, under the circumstances presented here, we are persuaded it is appropriate to dismiss the Petitions and terminate the proceedings to promote efficiency and minimize unnecessary costs. See, e.g., Intel Corp. v. Tela Innovations, Inc., IPR2019-01257, Paper 16 at 3 (PTAB Jan. 2, 2020). Accordingly, we grant the Motions and dismiss the Petitions.3 ORDER Accordingly, it is hereby: ORDERED that Petitioner’s Motion to Dismiss Petition for Inter Partes Review in each of these seven proceedings is granted; and FURTHER ORDERED that the Petition in each of these seven proceedings is dismissed and the proceedings are terminated. 3 This paper does not constitute a final written decision under 35 U.S.C. § 318(a). IPR2021-00245 (Patent 9,330,206) IPR2021-00351 (Patent 8,781,557) IPR2021-00246 (Patent 9,292,920) IPR2021-00352 (Patent 9,275,191) IPR2021-00247 (Patent 9,672,617) IPR2021-00353 (Patent 9,626,756) IPR2021-00248 (Patent 9,672,302) 4 For PETITIONER: Patrick McPherson Diana Sangalli Christopher Kroon Boris Zelkind DUANE MORRIS LLP PDMcPherson@duanemorris.com DMSangalli@duanemorris.com CSKroon@duanemorris.com bzelkind@duanemorris.com For PATENT OWNER: Timothy Riffe Kenneth Darby Craig Deutsch FISH & RICHARDSON P.C. riffe@fr.com kdarby@fr.com deutsch@fr.com