• Pfenex Inc. v. Glaxosmithkline Biologicals SAInstitution denied
  PTAB · Nov 13, 2019 · IPR2019-01027 · APJ Richard J Smith · IPR · Institution

  The Board denied institution on claims 1, 2, 4, 6, 8, 12–14, 17–19, and 21, exercising § 314(a) discretion because the concurrent petition did not justify its added burden.

  RulingsInstitution decision

  • Parallel petitionsDenied

    “challenge the same claims of the same patent, i.e., the ’345 patent. See Paper 2; Pfenex, IPR2019-01028, Paper 2. Moreover, we do not find the asserted differences between the ’028 Petition and ’027 Petition, as explained by Petitioner, to be sufficiently material to outweigh the inefficiencies and costs to the Board and Patent Owner that would result from instituting on both the ’027 Petition and the ’028 Petition. See TPG July 2019 Update, 26 (“Two or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.”). The ’028 Petition advances two obviousness challenges that rely on art regarding CRM197 and art regarding “a vector that directs the export of the mutant proteins into the periplasmic space.” Paper 10, 4. Although the ’027 Petition advances an anticipatory challenge based on Mekada, Petitioner relies on Mekada for its teachings of CRM197, similar to its reliance on Davis and Zhou in the ’028 Petition. Id. As for the signal peptide “capable of directing transport of said bacterial toxin polypeptide to the bacterial periplasm,” Petitioner points to the disclosure of expression vector pET-22b in Mekada to argue that “the periplasmic secretion function of pET-22b is an inherent property, regardless of whether this function is discussed in Mekada.” Pet. 26–27. Petitioner characterizes its two obviousness challenges in the ’027 Petition as relying on Mekada and art “which present[s] vector maps that encode a signal peptide for potential periplasmic location,” similar to Petitioner’s reliance on Inouye and Ikemura for “a vector that directs the export of the mutant proteins into the periplasmic space” in the ’028 Petition. Paper 10, 4. We thus agree with Patent Owner that “the redundancy of Petitioner’s references and the similar manner in which Petitioner relies on them is evident from Petitioner’s own characterization of their teachings.” Paper 11, 2. Although Petitioner describes some differences between the ’028 Petition and ’027 Petition, it fails to persuasively explain “why the issues addressed by the differences are material.” TPG July 2019 Update, 27. We are not persuaded on this record that merely arguing that different art is cited, or that the ’027 Petition includes an anticipation challenge, explains “why the issues addressed by the differences are material.” See id.; Paper 10, 4.” slip op. at 12

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied

    “Accordingly, we institute an inter partes review on all grounds presented in the ’028 Petition (see IPR2019-01028), and exercise the Director’s discretion under 35 U.S.C. § 314(a) to deny institution of the present Petition. ORDER Accordingly, it is ORDERED that Petitioner’s request for an inter partes review of claims 1, 2, 4, 6, 8, 12–14, 17–19, and 21 of the ’345 patent is denied and no inter partes review is instituted.” slip op. at 14

  Discretionary denial
  Patents in suitUS 9,422,345

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