PTAB, in a rare move, granted-in-part and denied-in-part the Petitioner AVX Corp.’s Request for Rehearing and instituted an inter partes review of a Greatbatch Ltd. patent on a pacemaker component. The Request asserted that the Board misapprehended or overlooked certain matters in its decision on institution. The same three-judge panel of the PTAB that had previously denied AVX’s request for inter partes review under the America Invents Act in August, granted the company’s request for rehearing and agreed that the first decision was erroneous. In doing so, the Board agreed that it had overlooked Petitioner’s previously presented arguments about the disclosure in the alleged prior art. The Board held that upon properly considering AVX’s arguments, it was persuaded that AVX had shown that several claims of the patent are likely invalid.
Specifically, in reassessing the anticipation grounds, the Board was no longer persuaded by Patent Owner’s arguments because it found that Patent Owner’s evidence and attorney argument do not demonstrate that the claims recite subject matter that is patentably distinct from the prior art. Instead, the Board was persuaded that the evidence presented in the expert testimony and the Petition was sufficient to show that the prior art disclosed a “laminar delamination gap.” In accordance with this new position, the Board changed its earlier determination and found that Petitioner had demonstrated a reasonable likelihood that some of the claims of U.S. Patent 7,327,553 are anticipated by the prior art.
AVX Corporation v. Greatbatch Ltd., IPR2015-00710 (PTAB Jan. 3, 2016) [Tornquist (opinion), Tierney, and Roesel (dissent)]