Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 106
`Entered: July 8, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AKER BIOMARINE AS and ENZYMOTEC LTD. and
`ENZYMOTEC USA, INC.,
`Petitioner,
`
`v.
`
`NEPTUNE TECHNOLOGIES AND BIORESSOURCES INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-000031
`Patent 8,278,351 B2
`____________
`
`
`Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`
`SNEDDEN, Administrative Patent Judge.
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`1 Case IPR2014-00556 has been joined with this proceeding.
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 106
`Entered: July 8, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AKER BIOMARINE AS and ENZYMOTEC LTD. and
`ENZYMOTEC USA, INC.,
`Petitioner,
`
`v.
`
`NEPTUNE TECHNOLOGIES AND BIORESSOURCES INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-000031
`Patent 8,278,351 B2
`____________
`
`
`Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`
`SNEDDEN, Administrative Patent Judge.
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`1 Case IPR2014-00556 has been joined with this proceeding.
`
`
`
`
`
`IPR2014-00003
`US 8,278,351 B2
`
`
`I. INTRODUCTION
`
`Aker Biomarine AS (“Aker”) and Enzymotec Ltd. and Enzymotec
`
`USA, Inc. (“Enzymotec”) (collectively, “Petitioner”), filed a Request for
`
`Rehearing (Paper 105, “Req. Reh’g” or “Request”) of our Final Decision
`
`(Paper 104, “Final Dec.”).
`
`In rendering the decision to institute, we instituted an inter partes
`
`review as to claims 16, 9, 12, 13, 1929, 32, 35, 36, and 4246 of U.S.
`
`Patent No. 8,278,351 B2 (Ex. 1001; “the ’351 patent”) for the following
`
`grounds of unpatentability:
`
`(i) Claims 1, 36, 9, 1213, 1924, 2629, 32, 3536, and 4246 of
`
`the ’351 patent under 35 U.S.C. § 102 as anticipated by
`
`Beaudoin I (Ex. 1002); and
`
`(ii) Claims 16, 9, 12, 13, 1929, 32, 35, 36, and 4246 of the ’351
`
`patent under 35 U.S.C. § 103 as obvious over the combination
`
`Fricke (Ex. 1006), Bergelson (Ex. 1017), Yasawa (Ex. 1015),
`
`Itano (Ex. 1009), and the WHO Bulletin (Ex. 1018).
`
`Decision to Institute, 28–29 (Paper 22 (“Dec.”)).
`
`We, then, denied the remaining grounds of unpatentability asserted by
`
`Petitioner as redundant to the grounds of unpatentability on which we
`
`already initiated an inter partes review. Id. at 2728. The grounds of
`
`unpatentability that were denied as redundant include:
`
`(i) Claims 1, 36, 9, 12, 13, 1924, 2629, 32, 35, 36, and 4246
`
`under 35 U.S.C. § 102(b) over Beaudoin II (Ex. 1003);
`
`(ii) Claims 1, 36, 9, 12, 13, 1924, 2629, 32, 35, 36, and 4246
`
`under 35 U.S.C. § 102(b) over Maruyama (Ex. 1004);
`
`2
`
`
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`IPR2014-00003
`US 8,278,351 B2
`
`
`(iii) Claims 1, 36, 9, 12, 13, 1924, 2629, 32, 35, 36, and 4246
`
`under 35 U.S.C. § 102(b) over Fujita (Ex. 1005);
`
`(iv) Claims 1, 36, 9, 1924, 2629, 32, and 4246 under 35 U.S.C.
`
`§ 102(b) over Fricke (Ex. 1006);
`
`(v) Claims 1, 1921, 24, and 4244 under 35 U.S.C. § 102(b) over
`
`Rogozhin (Ex. 1008);
`
`(vi) Claims 16, 9, 12, 13, 1929, 32, 35, 36, and 4246 under 35
`
`U.S.C. § 103(a) over the combination of Beaudoin I and Bergelson
`
`(Ex. 1017);
`
`(vii) Claims 16, 9, 12-13, 19–29, 32, 35, 36, and 4246 under 35
`
`U.S.C. § 103(a) over the combination of a Beaudoin I, the Final
`
`Prospectus (Ex. 1011), 2001 Press Release (Ex. 1012), and
`
`Bergelson; and
`
`(viii) Claims 16, 9, 1213, 1929, 32, 3536, and 4246 under 35
`
`U.S.C. § 103(a) over the combination of Fujita, Watanabe (Ex.
`
`1039), Itano (Ex. 1009), and Yasawa (Ex. 1015).
`
`Id.
`
`In our Final Decision, we found that Petitioner had established by a
`
`preponderance of the evidence that claims 14, 6, 9, 12, 13, 1927, 29, 32,
`
`35, 36, and 4246 were unpatentable, but found that Petitioner did not
`
`establish sufficiently that claims 5 and 28 were unpatentable. Final Dec. 36–
`
`37.
`
`In its Request for Rehearing, Petitioner contends that the Board
`
`should reconsider its decision not to institute the following grounds of
`
`unpatentability that were denied as redundant:
`
`(i) Claims 5 and 28 under 35 U.S.C. § 102(b) over Maruyama (Ex.
`
`3
`
`
`
`IPR2014-00003
`US 8,278,351 B2
`
`
`1004); and
`
`(ii) Claims 5 and 28 under 35 U.S.C. § 102(b) over Fujita (Ex. 1005).
`
`Reh’g Req. 115.
`
`For the reasons set forth below, Petitioner’s request for rehearing is
`
`denied.
`
`II. ANALYSIS
`
`A request for rehearing must identify specifically all matters the party
`
`believes the Board misapprehended or overlooked, and the place where each
`
`matter was addressed previously in a motion, an opposition, or a reply. 37
`
`C.F.R. § 42.71(d).
`
`In its Request for Rehearing, Petitioner contends that the Board lacks
`
`authority to decline to institute on grounds of unpatentability based, in whole
`
`or in part, on Maruyama and Fujita. Req. Reh’g 1014. Petitioner further
`
`argues that it was an abuse of discretion to decline to institute on grounds of
`
`unpatentability based on Maruyama and Fujita under the principles of
`
`redundancy. Id. at 1415. We disagree.
`
`We begin our analysis by noting that the rules for inter partes reviews
`
`were promulgated to take into account the “effect of any such regulation on
`
`the economy, the integrity of the patent system, the efficient administration
`
`of the Office, and the ability of the Office to timely complete proceedings.”
`
`35 U.S.C. § 316(b). As mandated by 35 U.S.C. § 316(a)(11), 37 C.F.R.
`
`§ 42.100(c) was promulgated to require that the final written determination
`
`in an inter partes review to be issued one year after the date of institution,
`
`except that the review may be extended by not more than six months for
`
`good cause shown. Further, 37 C.F.R. § 42.108(b) provides that “[a]t any
`
`4
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`IPR2014-00003
`US 8,278,351 B2
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`time prior to institution of inter partes review, the Board may deny some or
`
`all grounds for unpatentability for some or all of the challenged claims.”
`
`This discretion stems directly from 35 U.S.C. § 316(b), which recognizes,
`
`among other things, that inter partes proceedings must be conducted to
`
`ensure the ability of the Office to timely complete the proceedings.
`
`The concept of redundancy is a tool used by the Board in determining
`
`whether to exercise its discretion to deny some or all grounds set forth in the
`
`Petition. The proper focus of a redundancy designation is on whether
`
`Petitioner articulates a meaningful distinction in terms of relative strengths
`
`and weaknesses with respect to the application of the prior art disclosures to
`
`one or more claim limitations. Liberty Mutual Ins. Co. v. Progressive
`
`Casualty Inc. Co., CBM2012-00003 (Paper No. 7), at *2 (PTAB, Oct. 25,
`
`2012).
`
`In its Request for Rehearing, Petitioner argues why the grounds of
`
`unpatentability based on Maruyama or Fujita are stronger than the grounds
`
`of unpatentability on which we instituted. Req. Reh’g, 78. This analysis,
`
`however, is based on a comparison of the claim construction for the term
`
`“about” set forth in our Decision of Institution and Final Decision. Id. The
`
`analysis is not based upon the claim construction for the term “about” set
`
`forth in the Petition and, more importantly, the analysis is not part of the
`
`Petition.
`
`Petitioner, in its Petition, did not explain adequately the relative
`
`strengths or weaknesses between the applied prior art references. If
`
`Petitioner believed that any other grounds set forth in the Petition had certain
`
`weaknesses or strengths, as compared to grounds of unpatentability based on
`
`Maruyama or Fujita, for example based on alternative claim constructions
`
`5
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`
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`IPR2014-00003
`US 8,278,351 B2
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`that Patent Owner might have raised, it was incumbent upon Petitioner to
`
`identify those strengths or weaknesses in its Petition. Doing so would have
`
`allowed us to recognize and weigh such factors in rendering a decision as to
`
`whether to institute review based on the different asserted grounds. Simply
`
`proposing different grounds of unpatentability directed to the same subset of
`
`claims does not distinguish meaningfully the applied prior art references.
`
`Based on the analysis set forth in the Petition, we determined certain
`
`grounds to be redundant, as the relative strengths and weaknesses of the
`
`different stated grounds were not readily apparent from the analysis set forth
`
`in the Petition. It is a matter of discretion to not proceed with any redundant
`
`ground and we exercised that discretion without abuse of the process.
`
`Petitioner further request that we exercise our authority 37 C.F.R.
`
`§ 42.5 and reverse our decision not to institute as to Maruyama and Fujita.
`
`Req. Reh’g, 910. In making this request, Petitioner fails to appreciate that
`
`we are charged with securing “the just, speedy, and inexpensive resolution
`
`of every proceeding.” 37 C.F.R. § 42.1(b). Reversing our decision not to
`
`institute as to Maruyama and Fujita after issuance of our Final Decision
`
`would defeat the purpose of that mandate.
`
`For the forgoing reasons, Petitioner has not shown that the Board
`
`misapprehended or overlooked any matter in denying the redundant grounds
`
`of unpatentability based on either Maruyama or Fujita.
`
`III. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner’s request for rehearing is denied.
`
`
`
`
`6
`
`
`
`IPR2014-00003
`US 8,278,351 B2
`
`PETITIONER:
`
`Amanda Hollis
`amanda.hollis@kirkland.com
`
`
`
`PATENT OWNER:
`
`Dean Farmer
`dfarmer@cooley.com
`
`
`7
`
`
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