Osteoplastics LLC

Patent Trials and Appeals Board

Jun 4, 2021

IPR2021-00246 (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