Board Consolidates IPR’s of Two Different (But Related) Patents

In FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 10 (September 5, 2014), the Board consolited two inter partes reviews directed to different but related patents. In IPR2014-00411 inter partes review was instituted as to claims 1-22, 31, 37-40, 42-56, and 58 of Patent No.8,426,813. In IPR2014-00434 inter partes review was been instituted as to claims 1-7 and 9-20 of Patent No. 8,193,496.

The Board noted that the claimed invention of the ’813 patent is to an apparatus and the claimed invention of the ’496 patent is to a method of using the apparatus, and the disclosure of the ʼ813 patent and the disclosure of the ʼ496 patent are essentially identical.  The Petitioner’s witness in both IPRs is the same and his Declaration testimony overlaps considerably.  The testimony of any additional witness in both IPRs is expected in large measure to overlap.  The Board concluded that in order to secure a just, speedy, and inexpensive resolution of both proceedings, 37 C.F.R. § 42.1(b), and in view of some common issues in both IPRs, trial in IPR ʼ411 and the trial in IPR ʼ434 will be consolidated. 37 C.F.R. § 42.5(a).


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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.