- Coherus Biosciences, Inc. v. Hoffmann-Laroche Inc.Rehearing deniedPTAB · Jul 13, 2018 · IPR2017-02066 · APJ Wesley B Derrick · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution because Petitioner did not consistently define the claimed hinge or show an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW 37 C.F.R. § 42.71(d) provides that: 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, opposition, or a reply. See also Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“matters in construing the claims does not address our reasoning set forth in the decision. Contrary to Petitioner’s contentions, we did not construe the claims to be limited to fusion proteins comprising a hinge having the full amino acid sequence encoded by the corresponding hinge exon, including three cysteine residues. Although we did construe the claims to exclude “any protein with less than all of the amino acid sequence of the hinge domain of human IgG (or IgG1) immunoglobulin heavy chain, even if functional,” see Dec. 7, we could not discern from Petitioner’s discussion of the claims and the art any consistent demarcation in the amino acid sequence of human IgG (or IgG1) concerning where the first domain ends and the hinge domain begins. As we explained, the phrase “all of the domains of the constant region . . . other than the first domain of said constant region” leaves unsettled “where in the constant region the divide lies between the first domain of the constant region and the hinge domain.” Dec. 7–8. What is settled, however, is that the ordinary and customary meaning of the terms in the phrase requires that all constant region amino acid sequence that is not part of the first domain must be included in the fusion protein. Id. at 7. As made explicit in the Decision, Petitioner failed to define in a consistent manner where the divide lies between the first domain of the constant region and the hinge domain. It was in light of this deficiency that we determined that Petitioner had not met the requisite burden for instituting inter partes review. Id. at 8. As we further explained:” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As made explicit in the Decision, Petitioner failed to define in a consistent manner where the divide lies between the first domain of the constant region and the hinge domain. It was in light of this deficiency that we determined that Petitioner had not met the requisite burden for instituting inter partes review. Id. at 8. As we further explained: [W]ith respect to Zettlmeissl, Petitioner appears to assert that “all of the hinge domain” requires the hinge segment encoded by the hinge exon, including three cysteine residues. But with respect to Watson, Petitioner appears to assert that “all of the hinge domain” simply requires a portion of sequence that includes the two cysteine residues involved in joining the heavy chains. Id. at 14. Notwithstanding the apparent differences in amino acid sequence, unacknowledged in the Petition, “Petitioner relies on Zettlmeissl and Watson as teaching the use of the same, identical portion of the IgG heavy chain, and relies on that portion for use in the fusion protein.” Id. at 10 (citing Pet. 5); see also id. at 6, 12–14, Pet. 5 (stating “both [Watson and Zettlmeissl] reported optimal results by employing the identical portion of the IgG heavy chain as claimed in the ’182 patent”).” slip op. at 5
Claim constructionPatents in suitUS 8,063,182 - Coherus Biosciences, Inc. v. Hoffmann-Laroche Inc.Rehearing deniedPTAB · Jul 13, 2018 · IPR2017-01916 · APJ Wesley B Derrick · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution for claims 1–36 of the ’182 patent and claims 1–10 of the ’522 patent because Petitioner did not show an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW 37 C.F.R. § 42.71(d) provides that: 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, opposition, or a reply. See also Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As made explicit in the Decision, Petitioner failed to define in a consistent manner where the divide lies between the first domain of the constant region and the hinge domain. It was in light of this deficiency that we determined that Petitioner had not met the requisite burden for instituting inter partes review. Id. at 8. As we further explained: [W]ith respect to Zettlmeissl, Petitioner appears to assert that “all of the hinge domain” requires the hinge segment encoded by the hinge exon, including three cysteine residues. But with respect to Watson, Petitioner appears to assert that “all of the hinge domain” simply requires a portion of sequence that includes the two cysteine residues involved in joining the heavy chains. Id. at 14. Notwithstanding the apparent differences in amino acid sequence, unacknowledged in the Petition, “Petitioner relies on Zettlmeissl and Watson as teaching the use of the same, identical portion of the IgG heavy chain, and relies on that portion for use in the fusion protein.” Id. at 10 (citing Pet. 5); see also id. at 6, 12–14, Pet. 5 (stating “both [Watson and Zettlmeissl] reported optimal results by employing the identical portion of the IgG heavy chain as claimed in the ’182 patent”).” slip op. at 5
- BurdenDecided for patent owner
“As made explicit in the Decision, Petitioner failed to define in a consistent manner where the divide lies between the first domain of the constant region and the hinge domain. It was in light of this deficiency that we determined that Petitioner had not met the requisite burden for instituting inter partes review. Id. at 8. As we further explained: [W]ith respect to Zettlmeissl, Petitioner appears to assert that “all of the hinge domain” requires the hinge segment encoded by the hinge exon, including three cysteine residues. But with respect to Watson, Petitioner appears to assert that “all of the hinge domain” simply requires a portion of sequence that includes the two cysteine residues involved in joining the heavy chains. Id. at 14. Notwithstanding the apparent differences in amino acid sequence, unacknowledged in the Petition, “Petitioner relies on Zettlmeissl and Watson as teaching the use of the same, identical portion of the IgG heavy chain, and relies on that portion for use in the fusion protein.” Id. at 10 (citing Pet. 5); see also id. at 6, 12–14, Pet. 5 (stating “both [Watson and Zettlmeissl] reported optimal results by employing the identical portion of the IgG heavy chain as claimed in the ’182 patent”).” slip op. at 5
NonePatents in suitUS 8,163,522
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.