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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 30
`Entered: January 10, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`CYANOTECH CORPORATION
`Petitioner
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`v.
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`THE BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS
`Patent Owner
`____________
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`Case IPR2013-00401
`Patent 5,527,533
`____________
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`Before WILLIAM V. SAINDON, SCOTT E. KAMHOLZ, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
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`SNEDDEN, Administrative Patent Judge.
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`
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`DECISION
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`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
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`

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`I.
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`INTRODUCTION
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`Petitioner Cyanotech Corporation filed a request for rehearing (Paper 22)
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`of the Board’s decision, dated Dec. 19, 2013 (Paper 17), which instituted inter
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`partes review of claims 1-15, 21, 22, and 26 of U.S. Patent No. 5,527,533 (“the
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`’533 patent”). For the reasons stated below, Cyanotech’s request is denied.
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`II. STANDARD OF REVIEW
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`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
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`panel will review the decision for an abuse of discretion.” An abuse of discretion
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`occurs when a “decision was based on an erroneous conclusion of law or clearly
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`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v.
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`Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988). See
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`also 37 C.F.R. § 42.71(d) (“The request must specifically identify all matters the
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`party believes the Board misapprehended or overlooked”).
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`III. DISCUSSION
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`Inter partes review of the ’533 patent was instituted on the following
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`grounds:
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`(i) Claims 1, 3, 8-15, 21, 22, and 26 as anticipated under § 102(b) by
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`Grangaud; and
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`(ii) Claims 1-15, 21, 22, and 26 as obvious under § 103(a) over
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`Grangaud and Dowling.
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`The remaining grounds of unpatentability proposed in the petitions were denied as
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`redundant to the above grounds or deficient. Decision 12-19.
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`In the Decision, the Board denied inter partes review of claim 16, which
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`recites a method of treating an individual suffering from age-related macular
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`degeneration. Cyanotech asserts that claim 16 should be instituted because it
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`recites a species within the genus of degenerative retinal disease recited in
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`claim 26, which was instituted. Req. Reh’g. 1-4. We are not persuaded. A
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`single disclosed species can anticipate an entire genus, however, disclosure of a
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`genus does not necessarily anticipate a species. In re Berg, 140 F.3d 1428
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`(Fed.Cir., 1998); cf. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed.
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`Cir. 2006) (“[A] very small genus can be a disclosure of each species within the
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`genus”). In its petition, Cyanotech made no credible assertion that the nature of
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`the genus of claim 26 is such that the disclosure of a species of the genus should be
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`considered anticipatory. The Board could not have misapprehended or overlooked
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`an argument not presented sufficiently in the petition. Cyanotech has otherwise
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`shown no abuse of discretion in the Decision.
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`Cyanotech also asserts that Massonet is not redundant as to claims 16-25 and
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`27 and is not redundant as to preventive use of astaxanthin because Massonet
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`provides, in more detail and scope than Grangaud, information related to the
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`preventive and the curative effects of astaxanthin in the tissues in which
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`astaxanthin accumulated. Req. Reh’g. 4-8. Petitioner’s arguments are not
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`persuasive. The Board is charged with securing the just, speedy, and inexpensive
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`resolution of every proceeding. 37 C.F.R. § 42.1(b). A redundancy designation
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`may result from a petitioner’s failure to articulate a meaningful distinction in terms
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`of relative strengths and weaknesses with respect to application of the prior art
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`disclosures to one or more claim limitations. In its petitions, Cyanotech did not
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`explain how or why any of the prior-art combinations of the denied grounds are
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`any more relevant to the claims than those of the grounds on which the review was
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`instituted, nor was such a distinction apparent to us.
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`In its request for rehearing, Cyanotech asserts that Massonet is relevant to
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`the preventive administration of astaxanthin. In its petitions, however, Cyanotech
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`did not construe the term “treating” to include preventive use of astaxanthin, and
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`we adopted Cyanotech’s construction of this term for purposes of the Decision.
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`Decision 8. Thus, we were not persuaded that the stated differences between
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`Massonet and Grangaud are relevant to the claims in a manner that is not
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`redundant. Cyanotech has shown no abuse of discretion in the Decision in this
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`regard and may not use a Request for Rehearing to augment its prior, unsuccessful,
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`arguments.
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`IV. ORDER
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`Accordingly, it is hereby
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`ORDERED that Petitioner’s request for rehearing is denied.
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`Petitioner:
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`Joseph A. Rhoa
`jar@nixonvan.com
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`George E. Darby
`cyan@teleport-asia.com
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`Patent Owner:
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`Mark Schuman
`mschuman@carlsoncaspers.com
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`Iain McIntyre
`imcintyre@carlsoncaspers.com
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