November 3, 2016Newsletter

This Week at the Board - November 3, 2016

Petitioner Estopped from Maintaining Challenge That Could Have Been Raised in Earlier Proceeding

In IPR2015-01093, the PTAB found Petitioner was estopped from maintaining its challenge to independent claim 215, which already was the subject of a final written decision.

Under 35 U.S.C. § 315(e)(1), a petitioner who obtains a final written decision on a patent claim in an IPR may not maintain a subsequent proceeding with respect to that same claim on a ground it “reasonably could have raised” in the earlier proceeding. While the grounds raised by Petitioner in the instant IPR differed from those raised in the earlier proceeding, the Board concluded the challenge could have been raised in the earlier proceeding and, consequently, Petitioner was estopped from maintaining its challenge.

The Board noted that while it was necessary to address the parties’ contentions with respect to independent claim 215 because claim 238 depended from claim 215, the Board did not otherwise provide a final written decision on the merits with respect to claim 215, or again hold that claim to be unpatentable.

A link to the PTAB’s decision is provided here.


PTAB Invalidates Patent on § 103 Grounds as Discovery Was “Routine Experimentation”

In IPR2015-01093, the PTAB found the claims of U.S. Patent No. 7,056,866 (“the ‘866 Patent”) unpatentable under 35 U.S.C. § 103(a). The ‘866 Patent discloses stabilized drug formulations of glucagon-like peptide-2 (“GLP-2”) and GLP-2 analog formulations. The formulations comprise a phosphate buffer, L-histidine as a stabilizing amino acid, and Mannitol as a bulking agent. The question before the Board was whether a person of ordinary skill in the art would have been motivated to formulate the analogs with L-histidine and mannitol with a reasonable expectation of success.

Notably, and despite Patent Owner’s argument to the contrary, the Board determined that two prior art references provided limited parameters and directions as to possible formulations. In addition to the disclosures of the references, the Board relied on expert testimony in determining “that the identification of the optimal sugar and amino acid to add to a formulation for stability purposes was nothing more than routine experimentation.” Because the experimentation needed to confirm the successful application with GLP-2 analogs was “nothing more than the routine application of a well-known problem-solving strategy,” only the work of a skilled artisan, as opposed to an inventor, was necessary.  Thus, the board found the claims of the ‘866 Patent obvious.

A link to the PTAB’s order is provided here.


PTAB Denies Institution of IPR Based on Previously Filed IPR

In a recent institution decision in IPR2016-00944,  the Board denied a Petitioner’s second petition for IPR that was based on a first petition for IPR that the Board also denied.  In the first petition, the Petitioner challenged claims 1-18 of U.S. Patent No. 8,241,284 based on a combination of references.  In that case, the Board denied the first Petition based on a claim construction that led the Board to find that the Petitioner did not point to sufficient evidence or present persuasive argument to show the prior art taught or suggested the claimed invention.  Four months later, the Petitioner filed the second petition challenging claims 1 and 3-11 of the ‘284 Patent using the same combination of prior art plus one new reference while arguing that the new art was required to address ‘unforeseeable and unexpected claim construction’ in the first IPR.  The Board was not persuaded, noting that the Petitioner could have foreseen the construction, and found that the teachings of the new reference and related arguments were substantially the same as those found in the first petition.  Accordingly, the Board believed the Petitioner was improperly using the first institution decision as a ‘road map’ to file the second petition.  Therefore, the Board denied the instituting by exercising its discretion under 35 U.S.C. § 325(d) to deny the second petition because it was based on substantially the same prior art and arguments that were previously presented to the Office.

A link to the PTAB’s order is provided here.

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