- Guardant Health, Inc. v. University Of WashingtonInstitution deniedPTAB · Aug 1, 2022 · IPR2022-00449 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution because the written-description priority arguments were substantially the same as those considered by the Office, and Petitioner did not show material error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Based on this record, we find Petitioner’s arguments challenging written description support are the same or substantially the same as those considered by the examiner during the prosecution of the ’045 application. 4. Material Error Having found that the condition in the first part of the two-prong framework is satisfied, we next evaluate whether Petitioner has demonstrated a material error by the Office in its prior consideration of those arguments. Advanced Bionics, 8. Based on the current record, we determine Petitioner has not met its burden to show the examiner materially erred.” slip op. at 15
- Disclosure Requirements (§112) › Written description (Ariad)Not reached
“Specifically, Petitioner argues that the ’785 application lacks written description support for “converting” or “attaching” tags to “circulating DNA molecules,” as recited in independent claims 1 and 20. Id. at 17–30. Patent Owner argues that we should deny institution under § 325(d) “because the Office already found that the specification provides § 112 support for tagging circulating DNA.” Prelim. Resp. 10. For the reasons explained below, we find Patent Owner’s arguments persuasive.5 5 As another basis for its priority arguments, Petitioner contends that the ’785 application does not enable methods for “converting” or “attaching” tags to “circulating DNA molecules.” Pet. 30. Patent Owner asserts that “[t]he Petition gives enablement only cursory treatment.” Prelim. Resp. 36. We agree with Patent Owner. Petitioner disposes of the entire enablement argument in a single seven-line paragraph. See Pet. 30. It provides no meaningful analyses of the factors set forth in In re Wands, 858 F.2d 731,” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“III. CONCLUSION Petitioner’s anticipation and obviousness grounds rest on the priority date of the challenged claims. Because we decline to reconsider Petitioner’s challenge of priority date based on lack of written description support, we exercise our discretion under § 325(d) and decline to institute inter partes review of the ’699 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied.” slip op. at 18
§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,689,699 - Passage Bio, Inc. v. The Trustees Of The University Of Pennsylvania And Regenxbio, Inc.Institution deniedPTAB · Oct 6, 2021 · PGR2021-00073 · APJ Zhenyu Yang · PGR · Institution
The Board denied institution of PGR on claims 1–15, finding the § 112 arguments substantially repeated prosecution arguments without material Office error and exercising discretion under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Under § 325(d), in determining whether to institute a post-grant review, “the Director may take into account whether, and reject the petition 1 U.S. Patent No. 7,906,111 B2, issued March 15, 2011 (Ex. 1019, “the ’111 patent”). The ’111 patent is in the same family as the challenged ’441 patent. See infra, Section II.A.1. 2 Petitioner contends that “[w]hile Petitioner discusses the ’111 prior art patent, other printed publications – all within the ’441 patent’s family – are also prior art because they published more than one-year prior to October 2, 2018.” Pet. 73 n.14. 6 or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Our § 325(d) analysis employs a two-prong framework: (1) whether the arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential). When analyzing the second prong, “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 9. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id.” slip op. at 6
- Other 314aInstitution denied discretionary otherDenied
“Petitioner further asserts that the challenged claims lack utility. Pet. 68–72. Institution of post-grant review is discretionary. See 35 U.S.C. § 324(a); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but never compelled, to institute an IPR proceeding”).6 6 Even though SAS and Harmonic address inter partes reviews, we see no reason to interpret the statute governing post-grant reviews differently. 26 In exercising that discretion, we are guided by the statutory requirement, in promulgating regulations for post-grant review, to consider the effect of any regulations on “the efficient administration of the Office [and] the ability of the Office to timely complete proceedings,” 35 U.S.C. § 326(b), as well as the requirement to construe our rules to “secure the just, speedy, and inexpensive resolution of every proceeding,” 37 C.F.R. § 42.1(b). Under the Office Guidance, “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018).7 Here, we determine that 35 U.S.C. § 325(d) is sufficiently implicated that instituting review on all grounds would undermine the statutory purpose of 35 U.S.C. § 325(d). Accordingly, we deny the entire Petition. SAS Q&A’s, Part D, Effect of SAS on Future Challenges that Could Be Denied for Statutory Reasons, answer to Question D1 (June 5, 2018).8” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAOther
“As an initial matter, we agree with Patent Owner that “the only functional requirement of the claims is the ability to form a functional 19 capsid.” Sur-reply 8; see also Pet. 21 (proposing that we construe the term “AAV capsid protein” to mean “a protein that can form an AAV capsid”). More importantly, contrary to Petitioner’s contention, the examiner, during the prosecution of the ’218 application and priority applications, specifically considered the formation of the capsid. See, e.g., Ex. 1002, 5172 (“[T]he lack of characterization of the capsid protein at the time of filing means one could not know which of the 736 amino acids or 2208 nucleotides could be modified without affecting the ability to form a ‘capsid’ protein.”); Ex. 1011, 1374, 2198 (“The specification teaches only SEQ ID NO: 123 and does not provide those variable amino acids nor any fragments such that a person of skill in the art would recognize those amino acids that are related by 95% to SEQ ID NO: 123 and have capsid formation and function.”); Ex. 2023, 11 (“[T]he specification teaches only that SEQ ID NO: 123 is essential to form a capsid.”).” slip op. at 19
Claim constructionDiscretionary denialPatents in suitUS 10,695,441 - Hospira, Inc. v. Genentech, Inc.Institution deniedPTAB · Jul 27, 2017 · IPR2017-00739 · APJ Robert A Pollock · IPR · Institution
The Board denied institution on claims 1–11 and 14–17 under § 325(d), finding the priority issue and Nabholtz ground had been considered during prosecution.
RulingsInstitution decision- BurdenDecided for patent owner
“Prelim. Resp. 10–11; see also id. 11, n.3 (arguing that Applicant demonstrated support for a three-part combination comprising a “further therapeutic agent”). Having considered the Specification of the ’649 Application and the arguments raised during prosecution, as discussed section II(B), above, Petitioner has not presented any further evidence in this proceeding that would persuade us to reach a conclusion different from the Examiner’s position that the challenged claims are adequately disclosed in the priority document.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“established priority for those claims based upon the parent application’s specific disclosure of using growth inhibitory agents as part of the present invention. (Ex. 1119-5 at 179 (citing Ex. 1121 at 20 (16:11- 24), 39 (35:6-14), 41 (37:9-18).) Based upon that disclosure, the examiner agreed that the claims reciting a combination with “a further growth inhibitory agent” were supported by, and thus entitled to priority to, the parent applications. (Ex. 1119-5 at 41; id. at 292-93; Ex. 1119- 6 at 245.) Prelim. Resp. 10–11; see also id. 11, n.3 (arguing that Applicant demonstrated support for a three-part combination comprising a “further therapeutic agent”). Having considered the Specification of the ’649 Application and the arguments raised during prosecution, as discussed section II(B), above, Petitioner has not presented any further evidence in this proceeding that would persuade us to reach a conclusion different from the Examiner’s position that the challenged claims are adequately disclosed in the priority document.” slip op. at 14
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledDecided for patent owner
“combination are needed to demonstrate that they can be usefully combined,’” flatly contradicts Patent Owner’s position that the ’649 Application and ’346 Provisional Application adequately disclose the claimed invention. Pet. 17–18 (citing Ex. 1119-5, 308–09). We do not find Petitioner’s argument persuasive. As an initial matter, Petition fails to address the “Wands” factors in its enablement analysis. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“As discussed in section II(B), above, the Examiner considered fully the written description and enablement issues underlying Applicant’s claim to priority in allowing the claims to issue, and Petitioner has not presented new evidence or arguments that would convince us that the Examiner’s determination was unreasonable. The Examiner’s decision to withdraw the rejection under 35 U.S.C. § 102(b) over Nabholtz was expressly predicated on that priority determination, which removed Nabholtz as prior art. In Ground I of this Petition, Petitioner also asserts that the claims are unpatentable under § 102(b) over Nabholtz, thus raising “the same or substantially the same prior art or arguments previously [] presented to the Office” as contemplated under 35 U.S.C. § 325(d). Under the circumstances of this case, we exercise our discretion under § 325(d) and decline to institute inter partes review based on Ground I.” slip op. at 18
§ 102 anticipation§ 112 disclosureDiscretionary denialPatents in suitUS 7,892,549
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.