- Lassen Therapeutics 1, Inc. v. Singapore Health Services Pte Ltd., And National University Of SignaporeInstitution deniedPTAB · Feb 6, 2020 · PGR2019-00053 · APJ Jamie T Wisz · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that claims 1–10 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a). We may not institute a post-grant review unless “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Applying that standard, and upon consideration of the information presented in the Petition and the Preliminary Response, we determine that the information presented fails to demonstrate it is more likely than not that at least 1 of the challenged claims of the ’603 patent is unpatentable. Accordingly, we deny institution of post-grant review of claims 1–10 of the ’603 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that, for purposes of the preliminary response only, it does not challenge Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 19. Based on the current record and for the purposes of this Decision, we adopt Petitioner’s proposed description of the person of ordinary skill in the art. Furthermore, we find that the prior art of record reflects this level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that “Interleukin 11 receptor α (IL- 11Rα) antibody” should not be construed to include antibodies that bind to IL-11Rα of non-human species but not to the human version of this protein because such a construction does not comport with the language of claim 1, which is clearly directed to treating a human subject. See Pause Tech. v. TiVo, 419 F.3d 1326, 1331 (Fed. Cir. 2005) (rejecting interpretation of claim element that ignored “other language appearing later in the claim” in stating that ‘“[p]roper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.’”) (citing Hockerson– Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed.Cir.1999)). Construing this term to include antibodies that bind solely to non-human IL- 11Rα would be inconsistent with a claim directed to treatment of a human. Accordingly, for purposes of this decision, we construe “Interleukin 11 receptor α (IL-11Rα) antibody” to mean “any natural or synthetic, monoclonal or polyclonal antibody made using any animal system including phage, or fragment or derivative thereof, that binds to human IL-11Rα.”” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“We agree with Patent Owner that Petitioner appears to have overlooked the ’603 patent Specification’s disclosure of anti-IL-11Rα antibodies. Specifically, the ’603 patent lists “monoclonal antibody clone 025 (Sino Biological), clone EPR5446 (Abcam), clone 473143 (R & D Systems), clones 8E2 and 8E4 described in US 2014/0219919 A1 [Edwards] and the monoclonal antibodies described in Blanc et al (J. Immunol Methods. 2000 Jul. 31; 241(1–2); 43–59).” Ex. 1001, 18:41–46; Ex. 1003 ¶ 176.6 Edwards, which Petitioner relies on for its obviousness and anticipation grounds, is directed to antibodies “that bind to IL-11Rα and neutralize IL-11 signaling.” Ex. 1008 ¶ 13. Table 1 of Edwards lists clones 8E2 and 8E4 and sixty-three other antibodies (including variants of 8E2) as “exemplary IL-11Rα-binding proteins.” Id. ¶ 362. Table 1 of Edwards also includes the sequence ID numbers for the heavy and light chains of the variable regions of each of these sixty-five clones and the amino acid sequences for each are disclosed in the sequence listing. Id. ¶ 362, p. 46– 104.7” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,106,603 - Dr. Reddy’S Laboratories, Ltd. / Dr. Reddy’S Laboratories, Inc. v. Galderma Laboratories, Inc.Institution deniedPTAB · Feb 16, 2016 · IPR2015-01778 · APJ Robert A Pollock · IPR · Institution
The Board denied institution because the petitioner did not show a reasonable likelihood that claims 1, 7, 8, 14, 15, and 20 were unpatentable over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“CONCLUSION Petitioner does not convince us that non-provisional parent applications of the ’506 patent (as represented by the specification of the ’506 patent) fail to provide adequate written descriptive support for the challenged claims. Accordingly, we do not agree with Petitioner’s contention that the ‘506 patent is not entitled to the benefit of the April 5, 2002, filing date of the earliest of those applications under 35 U.S.C. § 120 such that Ashley ’572, Ashley ’267, and/or ORACEA would qualify as prior art.10 Consequently, Petitioner has failed to establish a reasonable likelihood that it would prevail in showing that claims 1, 7, 8, 14, 15, and 20 are unpatentable in view of the asserted references. ORDER Accordingly, it is ORDERED that the Petition is denied as to all challenged claims of the ’506 patent.” slip op. at 17
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“We do not find Petitioner’s arguments persuasive. As an initial matter, we note that Petitioner has not established that the term “acne rosacea” was “antiquated and outdated” as of the earliest filing date of the chain of applications leading to issuance of the ’506 patent. Nor does Petitioner establish that one of ordinary skill in the art would not have understood that term to indicate rosacea—a condition commonly known to encompass inflammatory papules and pustules, albeit not comedones. See Pet. 22; Prelim. Resp. 18–19; Ex. 1004 ¶ 13; Ex. 1034, 144. To the extent a dermatologist would not, as Petitioner argues, “have lumped [acne vulgaris and rosacea] together in a single genus,” does not persuade us that written description is lacking. An inventor may choose to be his own lexicographer and give terms uncommon meanings if “done with reasonable clarity, deliberativeness, and precision.” See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the present case, we find no ambiguity in the ’506 patent’s definition of the invention as directed to the treatment of “all known types of acne,” including both acne vulgaris and rosacea. See Ex. 1001, 4:31–43. The ’506 patent characterizes the genus acne as “a disorder of the skin characterized by papules, pustules . . . and other blemishes or skin lesions,” and notes that rosacea evinces specific characteristics of “inflammatory lesions (erythema) and permanent dilation of blood vessels (telangiectasia).” Id. at 4:23–30, 41–43. We are not persuaded that written description is lacking because not all of the symptoms attributed to the genus acne apply to rosacea, or that a symptom specific to rosacea (i.e, telangiectasia) may only be treated surgically. See Pet. 23. Rather, we find it sufficient that the specification teaches the treatment of papules and pustules of the genus “acne”—expressly defined by the inventor as including rosacea.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“CONCLUSION Petitioner does not convince us that non-provisional parent applications of the ’506 patent (as represented by the specification of the ’506 patent) fail to provide adequate written descriptive support for the challenged claims. Accordingly, we do not agree with Petitioner’s contention that the ‘506 patent is not entitled to the benefit of the April 5, 2002, filing date of the earliest of those applications under 35 U.S.C. § 120 such that Ashley ’572, Ashley ’267, and/or ORACEA would qualify as prior art.10 Consequently, Petitioner has failed to establish a reasonable likelihood that it would prevail in showing that claims 1, 7, 8, 14, 15, and 20 are unpatentable in view of the asserted references.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“i. Rosacea The parties agree that the ’506 patent identifies rosacea (“acne rosacea”) as a form of acne. Pet. 30–31; Prelim. Resp. 7. Although Petitioner contends that one of ordinary skill in the art would not classify rosacea as a form of acne (Pet. 22; Ex. 1004 ¶¶ 12, 13), we apply the inventor’s clearly expressed definition that “acne include[s] . . . acne rosacea” (Ex. 1001 4:31–41). With respect to the symptoms of rosacea, however, neither party contends that uncommon meanings apply. Pet. 30– 31; Prelim. Resp. 6–8. We therefore construe rosacea as a form of acne having symptoms including papules, pustules, erythema, and telangiectasia, where the predominant lesions are papules and pustules. See Ex. 1001, 4:23–43; Ex. 1004, ¶¶ 7, 19 (“‘The predominant lesions [in rosacea] are papules and pustules.’ ([Ex. 1056] at 680; see also Exh. 1046, at 852, 958; Exh. 1047, at 1023, 1175.).”” slip op. at 9
Claim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 8,603,506
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.