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Petitioners Must Explain Combining Multiple Embodiments of Reference in Obviousness Argument, PTAB Litigation Blog

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In a series of recent decisions, the PTAB denied institution on a dozen petitions on related patents because of one problem it identified in the petitioner’s arguments. All of the petitioner’s proposed grounds challenged the patents under § 103, and all of the grounds relied on the same primary reference, "Aboul-Hosn." The PTAB found that the petitioner relied on multiple embodiments disclosed in Aboul-Hosn and did not adequately explain how those embodiments were interchangeable or why the skilled person in the art would have found it obvious to combine the teachings of those embodiments. See, e.g., Abiomed, Inc. v. Maquet Cardiovascular, LLC, IPR2017-01204, -01205, Paper 8 at 8-12 (PTAB Oct. 23, 2017); see also Abiomed, Inc. v. Maquet Cardiovascular, LLC, IPR2017-01201, -01202, -01203, Paper 8 at 8-12 (PTAB Oct. 20, 2017); Abiomed, Inc. v. Maquet Cardiovascular, LLC, IPR2017-01207, -01253, Paper 8 at 8-12 (PTAB Oct. 18, 2017); Abiomed, Inc. v. Maquet Cardiovascular, LLC, IPR2017-01025, Paper 8 at 7-11 (PTAB Sept. 26, 2017); Abiomed, Inc. v. Maquet Cardiovascular, LLC, IPR2017-01026, -01027, Paper 8 at 7-11 (PTAB Sept. 20, 2017); Abiomed, Inc. v. Maquet Cardiovascular, LLC, IPR2017-01028, -01029, Paper 8 at 7-11 (PTAB Sept. 20, 2017). (The petitioner has already requested rehearing of several of these decisions, and two other related petitions, IPR2017-01208 and IPR2017-01209, remain pending as of this writing.)requested rehearing of several of these decisions, and two other related petitions, IPR2017-01208 and IPR2017-01209, remain pending as of this writing.)

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