The Federal Circuit upheld PTAB's finding of non-obviousness in an IPR for lack of motivation to combine references. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., No. 2015-1693 (Fed. Cir. May 9, 2016). In this case, IBS petitioned for IPR of Illumina's patent and the PTAB instituted review on obviousness grounds and found that IBS failed to prove the claims were obvious. In reaching its decision, PTAB refused to consider IBS' reply brief and accompanying expert declaration as new arguments in violation of 37 CFR 42.23(b) and 42.6(a)(3). The Federal Circuit affirmed the PTAB's decision finding that the PTAB did not err in refusing the reply brief because of the expedited nature of IPRs which places an obligation on the petitioners to maker their case in their petition to institute.
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