- Arconic Technologies LLC v. Novelis Inc.Rehearing deniedPTAB · May 2, 2022 · DER2018-00004 · APJ James T Moore · DER · Rehearing
The Board denied Arconic’s rehearing request, leaving in place denial of institution because it had not shown sufficiently corroborated prior conception for derivation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“documents cited by Petitioner for each of the six steps of claim 22 and explained why they were insufficient to corroborate Mr. Marinelli’s testimony. Id. at 16–22. We concluded that “[s]ubstantial evidence does not support Petitioner’s assertion that its inventors conceived of the inventions allegedly communicated to Respondent’s inventors (i.e., the six-step processes of each of Respondent’s claims)” and denied institution of a derivation proceeding. Id. at 23.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“[w]e are not informed as to which of Mr. Marinelli, Mr. Dennis, and Mr. Shoemaker conceived what portions of the invention of claim 22 or how the three individuals jointly conceived of the recited process. Petitioner provides no explanation as to what the contributions of each individual were (other than that they were all “involved” in the development of the A951 process), the circumstances surrounding those contributions, or even when conception occurred. Indeed, Mr. Marinelli testifies that Petitioner began development of chromium-free aluminum pretreatments that provided the same performance characteristics of a chromate conversion coating in 1992 and that the development work spanned “the next two decades,” but does not explain when during that time he conceived of the process of claim 22 with Mr. Dennis and Mr. Shoemaker. Again, there is no meaningful information provided about what work was done by whom or the circumstances under which the claimed invention was conceived, other than a general assertion that it was Petitioner undertaking the work.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“a trial, a party may file a motion to expunge confidential information from the record.” 37 C.F.R. § 42.56. The Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 21–22, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”), provides: Confidential information that is subject to a protective order ordinarily would become public 45 days after denial of a petition to institute a trial or 45 days after final judgment in a trial. There is an expectation that information will be made public where the existence of the information is referred to in a decision to grant or deny a request to institute a review or is identified in a final written decision following a trial. A party seeking to maintain the confidentiality of information, however, may file a motion to” slip op. at 13
NonePatents in suitUS 11,807,942 - Scentair Technologies, LLC v. Prolitec, Inc.Rehearing deniedPTAB · Jun 24, 2021 · IPR2021-00013 · APJ Grace Karaffa Obermann · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding its new arguments untimely and unpersuasive as to the aerosol outlet limitation for claims 1–19.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in a petition. We could not have misapprehended or overlooked matters or arguments that were not asserted in the Petition. We deny the Rehearing Request because it is based on new arguments that Petitioner did not present in the Petition. B. Petitioner’s Arguments Are Unpersuasive Alternatively, even if we consider the new arguments raised for the first time in the Rehearing Request, we find none persuasive to show reversible error in the Decision. The ’767 patent describes and claims “a cap assembly” that is characterized by three distinct structures, namely, “a cap, a venturi insert, and a base attached together without welds or separate fasteners to define . . . an air outlet chamber” that is “partitioned from the interior of the receptacle by the base.” Ex. 1001, 15:6–13 (claim 1) (emphasis added); see id. at 3:30–43, 9:45–62 (written description).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“The Petition advances three grounds, each of which is based on obviousness and asserts Benalikhoudja1 as a prior art reference. Pet. 5. We found in the Decision, and Petitioner does not dispute in the Rehearing Request, that each ground “depends on Petitioner’s assertion that Benalikhoudja discloses or suggests ‘an aerosol outlet chamber partitioned 1 We refer to US 2006/0237090 A1, published Oct. 26, 2006 (Ex. 1004). from the interior of the receptacle by the base.’” Dec. 5–6. As we did in the Decision, we refer herein to that feature of the claimed invention as “the aerosol outlet limitation.” Id. at 6. Based on the information presented in the Petition and Preliminary Response, we determined Petitioner did not show sufficiently, for purposes of trial institution, that Benalikhoudja discloses the aerosol outlet limitation. Id. at 9–10. Petitioner argues we erred on that point. Req. Reh’g 1–6.” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,480,767 - Sports Nutrition Research, Ltd. v. Chemi NutraRehearing deniedPTAB · Apr 3, 2020 · DER2013-00001 · APJ Jameson Lee · DER · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner showed no abuse of discretion in finding insufficient evidence of derivation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). When rehearing a decision on petition, a panel will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. For reasons discussed below, we decline to modify the Decision. Accordingly, the Request for Rehearing is denied.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In essence, Petitioner is arguing that a derivation proceeding should always be instituted no matter how deficient is the initial evidence presented by Petitioner in the Petition, because both Petitioner and Respondent can submit evidence after institution of trial. We disagree. In the above-quoted argument, Petitioner is referring to hypothetical evidence “to be” developed during trial. We cannot make a decision on whether to institute trial based on non-existent evidence. We properly reviewed the evidence submitted by Petitioner and determined that that evidence does not meet the substantial evidence standard for instituting a derivation proceeding.” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“The constitutional arguments are without merit. The Federal Circuit has held that there is “no constitutional infirmity in [an] institution decision as the statute clearly bestows such authority on the Director pursuant to 35 U.S.C. § 314.” Arthrex, 941 F.3d at 1340. Arthrex’s reasoning likewise applies to derivation proceedings under the AIA. See 35 U.S.C. § 135(a)(1). The Decision will not be vacated. Nor will a new panel be appointed.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“of the MPEP. Paper 17, 4. These authorities, however, articulate general principles and do not support Petitioner’s assertion that the specific wherein clause at issue here represents merely an intended result and thus should not be accorded weight in determining patentability. Indeed, in Hoffer, the Court upheld the district court’s reading of the “whereby clause” at issue there as an actual limitation and not merely an intended result.3 Hoffer, 405 F.3d at 1330. “[W]hen the ‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. at 1329.” slip op. at 9
Claim constructionPatents in suitUS 10,869,843 - PTAB · Mar 25, 2019 · IPR2017-01294 · APJ James T Moore · IPR · Rehearing
The Board denied Edwards Lifesciences’ rehearing request, finding it had not shown that the Board overlooked its new argument about claim 20’s “inflatable means” limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R § 42.71(d); accord Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 2
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner does not inform us where this argument was made or this position was previously asserted. In an abundance of caution, we have carefully reviewed the Petition for this argument, and find it to be absent.” slip op. at 4
NonePatents in suitUS 6,371,962 - Hologic, Inc. v. Biomérieux, Inc.Rehearing deniedPTAB · Jan 31, 2019 · IPR2018-00569 · APJ Kristi L R Sawert · IPR · Rehearing
The Board denied Hologic’s rehearing request, leaving in place the denial of institution under § 325(d) for claims 1–6.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Board determined that these factors weighed in favor of denying institution because, inter alia: the Examiner considered the same prior art or prior art cumulative to Petitioner’s prior art during prosecution, id. at 12–13; the Examiner thoroughly considered the patentability of the ’352 patent’s claims over the lengthy period of prosecution, id. at 13–15; Petitioner’s arguments were substantially the same as the findings the Examiner made with respect to prior-art reference Montagnier, which is a strong (if not stronger) reference than the prior art Petitioner asserted in these Petitions for inter partes review, id. at 15–18; Petitioner failed to address §325(d) in the Petition, id. at 18; and Petitioner failed to persuade the Board that the Examiner erred in relying on the unexpected results shown in the Laayoun Declaration, id. at 18–21; see also id. at 21–22 (weighing the factors). As to the final finding, the Board considered Petitioner’s argument that the Laayoun Declaration is not persuasive evidence of non-obviousness because the Declaration compares the claimed invention to Bell’s prior-art primers, rather than Backus’s “closest prior art” primers. Id. at 20–21. The Board explained that Petitioner bears the burden to prove unpatentability in an inter partes review, and had failed, in this case, to provide “some persuasive evidence that the claimed primers would not have been unexpectedly better than Backus’s primers.” Id. at 21. The Board noted that the Examiner was aware of Backus, but nevertheless “accepted Bell as the closest prior art.” Id. The Board “decline[d] to revisit that decision,” because “Petitioner d[id] not persuade us that the Examiner erred in accepting that evidence as showing unexpected results.” Id. at 21–22.” slip op. at 4
Discretionary denialPatents in suitUS 8,697,352 - Hologic, Inc. v. Biomérieux, Inc.Rehearing deniedPTAB · Jan 31, 2019 · IPR2018-00568 · APJ Kristi L R Sawert · IPR · Rehearing
The Board denied Hologic’s rehearing request, leaving in place the § 325(d) denial of institution for claims 1–6 because Hologic did not show the Board abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Board determined that these factors weighed in favor of denying institution because, inter alia: the Examiner considered the same prior art or prior art cumulative to Petitioner’s prior art during prosecution, id. at 12–13; the Examiner thoroughly considered the patentability of the ’352 patent’s claims over the lengthy period of prosecution, id. at 13–15; Petitioner’s arguments were substantially the same as the findings the Examiner made with respect to prior-art reference Montagnier, which is a strong (if not stronger) reference than the prior art Petitioner asserted in these Petitions for inter partes review, id. at 15–18; Petitioner failed to address §325(d) in the Petition, id. at 18; and Petitioner failed to persuade the Board that the Examiner erred in relying on the unexpected results shown in the Laayoun Declaration, id. at 18–21; see also id. at 21–22 (weighing the factors). As to the final finding, the Board considered Petitioner’s argument that the Laayoun Declaration is not persuasive evidence of non-obviousness because the Declaration compares the claimed invention to Bell’s prior-art primers, rather than Backus’s “closest prior art” primers. Id. at 20–21. The Board explained that Petitioner bears the burden to prove unpatentability in an inter partes review, and had failed, in this case, to provide “some persuasive evidence that the claimed primers would not have been unexpectedly better than Backus’s primers.” Id. at 21. The Board noted that the Examiner was aware of Backus, but nevertheless “accepted Bell as the closest prior art.” Id. The Board “decline[d] to revisit that decision,” because “Petitioner d[id] not persuade us that the Examiner erred in accepting that evidence as showing unexpected results.” Id. at 21–22.” slip op. at 4
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsDecided for patent owner
“Here, Petitioner attempted to show that Bell is not the closest prior art by presenting schematics comparing the nucleotide sequences of Backus’s primers to Bell’s primers and repeating Dr. Linnen’s statements that he considered the Backus primer set “closer” to the claimed primer set than the Bell primer set. Pet. 52–54 (citing Ex. 1020 ¶¶ 317–327). But neither Petitioner nor Dr. Linnen attempted to explain—or present any evidence— that Backus’s primers would have achieved the same results as the claimed primers. See Instit. Dec. 21. Put differently, Petitioner’s bare assertions failed to establish a reasonable likelihood that Patentee’s unexpected results would have been any different when compared to Backus. See Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006) (calling patent challenger Unilever’s argument that patentee Kao’s unexpected results were not compared to the closest prior art “not sustainable”: “Even if we were to conclude that Gangadharan was clearly the closest prior art, Unilever has not demonstrated, or even alleged, that Gangadharan achieved [the unexpected results] reported by Kao. . . . In the absence of such an allegation, any error made by the trial court in using Gueret for its comparison would be harmless.”). Third, we note that Petitioner’s case appears to rely on an overly mechanical application of the “closest prior art.” See Reh’g Req. 6–12. Although unexpected results must be shown to be unexpected compared to the closest prior art, the Federal Circuit has warned against applying that requirement “so rigidly as to require [patentee] to identify and focus on just one prior art product when multiple, similar” products “existed or were described in the prior art.” Tris Pharma, Inc. v. Actavis Labs. FL, Inc., 2019 WL 254418, at *7 (Fed. Cir. Jan. 16, 2019). Thus, as we stated in the Institution Decision, we decline to revisit the Examiner’s decision to accept the Laayoun Declaration absent some persuasive evidence that the claimed primers would not have been unexpectedly better than Backus’s primers. Instit. Dec. 21.” slip op. at 8
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,697,352 - Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCRehearing deniedPTAB · Jan 30, 2019 · IPR2014-01558 · APJ James T Moore · IPR · Rehearing
The Board denied Volkswagen’s rehearing request, leaving claims 3, 16, and 20 not shown unpatentable because Saito, read in context, did not establish the claimed regeneration limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We find Petitioner’s position to be lacking in substance. The quotation provided by Petitioner is only a partial quotation. The complete quotation from Saito, with appropriate following context italicized, is as follows: The method of reducing NOx using a reducing agent such as hydrogen is widely known as a nonselective catalytic reduction method, but in this method, if large amounts of oxygen are present in the exhaust gas [amounts of] reducing agent sufficient to react with the oxygen will be added and the NOx will be reduced, which is not economical in so much as large amounts of reducing agent are consumed, and thus the use of nonselective catalytic reduction methods was limited to situations in which oxygen was not present, or situations in which the oxygen concentration had been greatly lowered. In the method of the present invention, the amount of reducing agent consumed is the amount necessary to reduce and remove the NOx that has been absorbed by the catalyst, which is a very small amount, and therefore this is very economically advantageous. Ex. 1008A, 3 column 1, lines 38–54 (emphasis added). The italicized language, to us, indicates that this discussion in Saito is not that simply of one nonpreferred specific embodiment of catalyst renewal taught, but rather a discussion of the reasons why nonselective catalytic reduction methods of exhaust gas directly were not generally used due to their prohibitive costs. Moreover, it is a stretch to say that catalytic reduction methods are the same as renewing a devitalized catalyst as alleged in Petitioner’s request for rehearing. In this we agree with the Patent Owner that this disclosure of a prior art “non-selective catalytic reduction method does not render claims 3, 16, and 20 obvious.” Paper 75, 10. To the extent that Petitioner asserts we did not consider this argument, we have again considered it and again find it to be unpersuasive based upon Saito itself, when taken in complete context. As noted before, Saito’s example is explicit that Saito uses two catalyst beds and regenerates each catalyst bed independently of each other. PO Resp. 21, 24. By the use of valving, the reducing agent is introduced into the catalyst bed through which exhaust gas is not flowing. Id. at 21 (citing Ex. 1008B, 3). As to the several pages of additional argument and evidence provided in the request for rehearing beyond that originally found in the Petition and Reply, we shall not consider it, as it is an improper use of the rehearing process. See 37 C.F.R. § 71(d). The request for rehearing is therefore DENIED.” slip op. at 12
- Strike new argumentNew argument disregardedOther
“As to the several pages of additional argument and evidence provided in the request for rehearing beyond that originally found in the Petition and Reply, we shall not consider it, as it is an improper use of the rehearing process. See 37 C.F.R. § 71(d).” slip op. at 13
- Expert testimonyNot reached
NonePatents in suitUS 5,599,758 - Aragen Bioscience, Inc. / Transposagen Biopharmaceuticals, Inc. v. Kyowa Hakko Kirin Co., Ltd.Rehearing deniedPTAB · Jan 22, 2018 · IPR2017-01262 · APJ Robert A Pollock · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show the prior art disclosed or enabled access to the mammalian FUT8 gene sequence required by claims 1–6.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Expert testimonyPetitioner expert discountedDecided for patent owner
“6, 2000 concerning the means and methods for creating cells in which the gene for the fucose-adding enzyme fucosyltransferase was knocked out, resulting in a modified sugar chain giving improved antibodies.” See id. at 12; Ex. 1026 ¶ 12. But Dr. Jefferis provides no definitive statement with respect to the availability of DNA encoding a mammalian α1,6- fucosyltransferase, focusing, instead, on the “basic enabling techniques described in the patent claims.” See Ex. 1026 ¶ 12; see also id. ¶ 14 (discussing statement in prosecution history “that construction of gene constructs and knock-out CHO cells were ‘standard methods’ in the prior art”). Accordingly, we do not find Dr. Jefferis’s testimony relevant to the availability of a mammalian FUT 8 gene sequence. Dr. Van Ness, in contrast, referenced “the known genetic sequence of the α1,6-fucosyltransferase gene,” after asserting that “[t]he human fucosyltransferase gene sequence had been cloned in 1994 by Sasaki et al. (269(20) J. BIOL. CHEM. 14730–37 (1994)).” Ex. 1007 ¶¶ 40, 73. As discussed in our Decision, Sasaki does not disclose a mammalian α1,6- fucosyltransferase recited in claim 1, but an α1,3-fucosyltransferase. Dec. 17. As such, Sasaki fails to support Dr. Van Ness’s generic reference to “the known genetic sequence of the α1,6-fucosyltransferase gene.” Because neither Dr. Van Ness nor Petitioner presented any evidence demonstrating how that the nucleotide sequence of an α1,3-fucosyltransferase teaches or suggests that of α1,6-fucosyltransferase recited in claim 1, we accorded little weight to Dr. Van Ness’s opinion. Id.” slip op. at 6
NonePatents in suitUS 7,425,446 - Aragen Bioscience, Inc. / Transposagen Biopharmaceuticals, Inc. v. Kyowa Hakko Kirin Co., Ltd.Rehearing deniedPTAB · Jan 22, 2018 · IPR2017-01254 · APJ Robert A Pollock · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of institution on claims 1–5 because Petitioner did not show an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- BurdenDecided for patent owner
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Because Petitioner raised none 1 Genbank entry AB025198.1. “Mus musculus mRNA for alpha-1,6- fucosyltransferase, complete cds,” https://www.ncbi.nlm.nih.gov/nuccore /%20AB025198. 2 Yanagidani et al., Purification and cDNA Cloning of GDP-i-Fuc:N-acetyl- β-d-glucosaminyl fucosyltransferase (α1-6FucT) from Human Gastric CancerMKN45 Cells, 121 J. Biol. Chem. 626-632 (1997). 3 Naofumi Uozumi, Purification and cDNA Cloning of Porcine Brain GDPL-Fuc:N-Acetyl-β-D-Glucosaminide α1→6Fucosyltransferase, 271 J. Biol. Chem. 27810-27817 (1996). of the above arguments in the Petition, nor timely submitted any of Exhibits 1039, 1042, and 1043, Petitioner has not established that we misapprehended or overlooked this evidence. Cf. DeSilva v. DiLeonardi, 181 F.3d 865, 866– 67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“of Drs. Van Ness and Jefferis. Req. Reh’g 12–14 (citing Ex. 1007 ¶¶ 18–20, 40–43, 77; Ex. 1026 ¶¶ 11–13). With respect to the latter, Petitioner points to Dr. Jefferis’s statement that a person of ordinary skill in the art “would have had knowledge of the scientific literature no later than October 6, 2000 concerning the means and methods for creating cells in which the gene for the fucose-adding enzyme fucosyltransferase was knocked out, resulting in a modified sugar chain giving improved antibodies.” See id. at 12; Ex. 1026 ¶ 11. But Dr. Jefferis provides no definitive statement with respect to the availability of DNA encoding a mammalian α1,6-fucosyltransferase, focusing, instead, on the “basic enabling techniques described in the patent claims.” See Ex. 1026 ¶ 12; see also id. ¶ 13 (discussing statement in prosecution history “that construction of gene constructs and knock-out CHO cells were ‘standard methods’ in the prior art”). Accordingly, we do not find Dr. Jefferis’s testimony relevant to the availability of a mammalian FUT 8 gene sequence. Dr. Van Ness, in contrast, referenced “the known genetic sequence of the α1,6-fucosyltransferase gene,” after asserting that “[t]he human fucosyltransferase gene sequence had been cloned in 1994 by Sasaki et al. (269(20) J. BIOL. CHEM. 14730–37 (1994)).” Ex. 1007 ¶¶ 40, 68. As discussed in our Decision, Sasaki does not disclose a mammalian α1,6- fucosyltransferase recited in claim 1, but an α1,3-fucosyltransferase. Dec. 16–17. As such, Sasaki fails to support Dr. Van Ness’s generic reference to “the known genetic sequence of the α1,6-fucosyltransferase gene.” Because neither Dr. Van Ness nor Petitioner presented any evidence demonstrating how the nucleotide sequence of an α1,3-fucosyltransferase teaches or suggests that of α1,6-fucosyltransferase recited in claim 1, we accorded little weight to Dr. Van Ness’s opinion. Id.” slip op. at 5
NonePatents in suitUS 8,067,232 - Aragen Bioscience, Inc. / Transposagen Biopharmaceuticals, Inc. v. Kyowa Hakko Kirin Co., Ltd.Rehearing deniedPTAB · Jan 22, 2018 · IPR2017-01252 · APJ Robert A Pollock · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the denial of institution on claims 1–12 because the petition did not establish access to the necessary mammalian FUT8 genetic material.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“isolated fucosyltransferase knock-out host cell.” Consistent with Patent Owner’s position, we construed the fucosyltransferease knock-out as “a disruption of FUT8, the gene encoding α1,6-fucosyltransferase.” Dec. 13. In denying the Petition, we found that Petitioner did not establish that the prior art disclosed or rendered obvious the challenged claims because it failed to present sufficient evidence that one of ordinary skill in the art would have had access to the necessary genetic starting material. Dec. 19– 24. In particular, we determined that “Petitioner fails to establish adequately that DNA encoding a mammalian α1,6-fucosyltransferase was either available, or could be routinely obtained by those of ordinary skill in the art.” Id. at 24. According to Petitioner, our finding is “clearly erroneous” and based on “misunderstandings about the record evidence, as well as a failure to weigh, in full, unrebutted expert testimony before the Board.” Req. Reh’g 1. We do not find Petitioner’s argument persuasive.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Because Petitioner raised none of the above arguments in the Petition, nor timely submitted any of Exhibits 1 Genbank entry AB025198.1. “Mus musculus mRNA for alpha-1,6- fucosyltransferase, complete cds,” https://www.ncbi.nlm.nih.gov/nuccore /%20AB025198. 2 Yanagidani et al., Purification and cDNA Cloning of GDP-i-Fuc:N-acetyl- β-d-glucosaminyl fucosyltransferase (α1-6FucT) from Human Gastric CancerMKN45 Cells, 121 J. Biol. Chem. 626-632 (1997). 3 Naofumi Uozumi, Purification and cDNA Cloning of Porcine Brain GDPL-Fuc:N-Acetyl-β-D-Glucosaminide α1→6Fucosyltransferase, 271 J. Biol. Chem. 27810-27817 (1996). 1038, 1041, and 1042, Petitioner has not established that we misapprehended or overlooked this evidence. Cf. DeSilva v. DiLeonardi, 181 F.3d 865, 866– 67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“the fucose-adding enzyme fucosyltransferase was knocked out, resulting in a modified sugar chain giving improved antibodies.” See id. at 12; Ex. 1026 ¶ 11. But Dr. Jefferis provides no definitive statement with respect to the availability of DNA encoding a mammalian α1,6-fucosyltransferase, focusing, instead, on the “basic enabling techniques to create the modified-antibody-producing mammalian cells described in the patent claims.” See Ex. 1026 ¶ 12; see also id. ¶ 13 (discussing statement in prosecution history “that construction of gene constructs and knock-out CHO cells were ‘standard methods’ in the prior art”). Accordingly, we do not find Dr. Jefferis’s testimony relevant to the availability of a mammalian FUT 8 gene sequence. Dr. Van Ness, in contrast, referenced “the known genetic sequence of the α1,6-fucosyltransferase gene,” after asserting that “[t]he human fucosyltransferase gene sequence had been cloned in 1994 by Sasaki et al. (269 (20) J. BIOL. CHEM. 14730–37 (1994)).” Ex. 1007 ¶¶ 40, 77. As discussed in our Decision, Sasaki does not disclose a mammalian α1,6- fucosyltransferase recited in claim 1, but an α1,3-fucosyltransferase. Dec. 20–21. As such, Sasaki fails to support Dr. Van Ness’s generic reference to “the known genetic sequence of the α1,6-fucosyltransferase gene.” Because neither Dr. Van Ness nor Petitioner presented any evidence demonstrating how the nucleotide sequence of an α1,3-fucosyltransferase teaches or suggests that of the α1,6-fucosyltransferase recited in claim 1, we accorded little weight to Dr. Van Ness’s opinion. Id.” slip op. at 6
NonePatents in suitUS 6,946,292
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.