Trials@uspto.gov
`571-272-7822
`
`Paper 21
`Entered: March 11, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PHARMACOSMOS A/S,
`Petitioner,
`
`v.
`
`LUITPOLD PHARMACEUTICALS. INC.,
`Patent Owner.
`____________
`
`
`
`
`
` Cases1 IPR2015-01490; Patent 7,754,702 B2
` IPR2015-01493; Patent 8,431,549 B2
`____________
`
`Before TONI R. SCHEINER, LORA M. GREEN, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are authorized to use this style heading when filing a single paper in
`the both proceedings, provided that such heading includes a footnote
`attesting that “the word-for-word identical paper is filed in each proceeding
`identified in the heading.”
`
`
`571-272-7822
`
`Paper 21
`Entered: March 11, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PHARMACOSMOS A/S,
`Petitioner,
`
`v.
`
`LUITPOLD PHARMACEUTICALS. INC.,
`Patent Owner.
`____________
`
`
`
`
`
` Cases1 IPR2015-01490; Patent 7,754,702 B2
` IPR2015-01493; Patent 8,431,549 B2
`____________
`
`Before TONI R. SCHEINER, LORA M. GREEN, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are authorized to use this style heading when filing a single paper in
`the both proceedings, provided that such heading includes a footnote
`attesting that “the word-for-word identical paper is filed in each proceeding
`identified in the heading.”
`
`
`
`IPR2015-01490; Patent 7,754,702 B2
`IPR2015-01493; Patent 8,431,549 B2
`
`
`A conference call was held on Wednesday, March 9, 2016, among
`
`Lisa Kole, representing Petitioner; George Quillin, representing Patent
`
`Owner; and Administrative Patent Judges Green, Scheiner, and Paulraj.
`
`Patent Owner requested the call in order to meet its obligation to confer with
`
`Board before filing a motion to amend, as required by 37 C.F.R. § 42.121.
`
`Initially, we note that as the moving party, Patent Owner “has the
`
`burden of proof to establish that it is entitled to the requested relief.” See 37
`
`C.F.R. § 42.20(c). Rule 42.20(c) places the burden on the patent owner to
`
`show a patentable distinction on each proposed substitute claim over the
`
`prior art. While not required to prove that the claims are patentable over
`
`every item of prior art known to a person of ordinary skill, the patent owner
`
`is required to explain why the claims are patentable over the prior art of
`
`record. Microsoft Corp. v. Proxyconn, Inc.¸ 789 F.3d 1292, 1307–8 (Fed.
`
`Cir. 2015) (affirming the Board’s denial of a motion to amend claims where
`
`the patent owner failed to establish the patentability of the substitute claims
`
`over the prior art of record); see also Masterimage 3D, Inc. v. RealD, Inc.,
`
`Case IPR2015-00040, slip op. at 1–2 (PTAB July 15, 2015) (Paper 42)
`
`(explaining that prior art of record includes any material art of record in the
`
`current proceeding, including art asserted in grounds on which the Board did
`
`not institute review, as well as material art in the prosecution of the patent).
`
`In particular, such prior art is material if it addresses the limitation added by
`
`the proposed substitute claim. Id. at 3 (“Because a proposed substitute claim
`
`is considered after the corresponding patent claim is determined
`
`2
`
`
`
`IPR2015-01490; Patent 7,754,702 B2
`IPR2015-01493; Patent 8,431,549 B2
`
`unpatentable, Patent Owner’s addition of a limitation to render the claim as a
`
`whole patentable places the focus, initially, on the added limitation itself.”
`
`
`
`For the convenience of the parties, we also include the following
`
`additional guidance. Generally, a challenged claim can be replaced by only
`
`one claim, and a motion to amend should, for each proposed substitute
`
`claim, specifically identify the challenged claim which it is intended to
`
`replace. Proposed substitute claims are only “proposed” claims, and are not
`
`added to the patent unless a corresponding motion to amend claims has been
`
`granted by the Board. We point the parties’ attention to the following orders
`
`for additional guidance regarding the requirements for a motion to amend:
`
`Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027 (PTAB) (Paper
`
`26) and Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766–67
`
`(Aug. 14, 2012) (Section II.G. Motions to Amend), with regard to the
`
`requirements of motions to amend.
`
`
`
`Patent Owner sought additional guidance from the panel.
`
`Specifically, Patent Owner inquired as to whether it could statutorily
`
`disclaim certain claims, or whether it needed previous authorization from the
`
`Board. We noted that it could statutorily disclaim any claim, whether trial
`
`had been instituted on that claim, or not, at any time. In that regard, we
`
`direct the parties attention to 37 C.F.R. § 1.321(a), which provides for
`
`disclaimer of a claim by a patentee.
`
`
`
`Patent Owner also inquired whether deleting members of a Markush
`
`group would be considered to be a narrowing amendment, and whether
`
`3
`
`
`
`IPR2015-01490; Patent 7,754,702 B2
`IPR2015-01493; Patent 8,431,549 B2
`
`written description support would have to be pointed out in the disclosure as
`
`originally filed for such an amendment.
`
`
`
`In response, we noted that deleting members of a Markush group
`
`would be considered a narrowing amendment. Moreover, Patent Owner
`
`should still point out written description support for the proposed substitute
`
`claim, including a proposed substitute claim in which a member of a
`
`Markush group has been deleted, can be found in the disclosure as originally
`
`filed. We cautioned Patent Owner, however, that it should not focus on
`
`where support for the new limitation can be found; but that it should point to
`
`where written description support occurs in the originally filed disclosure for
`
`any proposed substitute claim as a whole. In addition, Patent Owner must
`
`point out and discuss how the proposed substitute claims are supported by
`
`the originally filed disclosure in the body of the motion. In that regard, we
`
`noted that a claim filed with the original disclosure is part of that original
`
`disclosure, and such original claims may be used to demonstrate that a
`
`proposed substitute claim is supported by the disclosure as originally filed.
`
`
`
`Patent Owner additionally asked whether it could provide a list of
`
`exhibits and authorities that were referenced in the motion. Patent Owner
`
`also inquired whether it could provide also a claim tree of the original
`
`claims, as well as the proposed substitute claims. We responded that Patent
`
`Owner could provide the list of exhibits and authorities and/or the claim
`
`tree(s), and we would not count that against Patent Owner’s page limit for
`
`the motion to amend.
`
`4
`
`
`
`IPR2015-01490; Patent 7,754,702 B2
`IPR2015-01493; Patent 8,431,549 B2
`
`
`
`Finally, Patent Owner noted that we had instituted trial on claim 16 in
`
`IPR2015-01493, but not claim 15, on which claim 16 depends. Given that
`
`dependency, Patent Owner was unclear how it should present any possible
`
`amendments to claim 16.
`
`We noted that because a dependent claim incorporates all the
`
`limitations from the claims upon which it depends, Petitioner’s challenge of
`
`the dependent claim will also encompass the parent claims. As we noted in
`
`our Institution Decision, “[a]lthough the Petition does not specifically
`
`include independent claim 1 as part of [the] anticipation challenge [based on
`
`van Zyl-Smit], we must nonetheless consider whether the limitations of the
`
`independent claim are satisfied before turning to the dependent claims.”
`
`Paper 11, 11. Claim 16 depends upon claim 15, which in turn depends upon
`
`claim 1. The fact that we failed to institute trial on claim 15 in IPR2015-
`
`01493 was, therefore, an oversight. Claim 15 should also have been
`
`included in the challenge based on anticipation by van Zyl-Smit. Thus, we
`
`should have stated that trial is instituted on claims 1–5, 9, 15, 16 and 19
`
`under 35 U.S.C. § 102(b) as anticipated by van Zyl-Smit. We note that there
`
`is little prejudice to Patent Owner by that clarification, as claim 16
`
`necessarily includes all the limitations of claim 15.
`
`
`
`Accordingly, it is:
`
`ORDERED that the requirement “to confer” pursuant to 37 C.F.R.
`
`§ 42.121(a) has been satisfied; and
`
`5
`
`
`
`IPR2015-01490; Patent 7,754,702 B2
`IPR2015-01493; Patent 8,431,549 B2
`
`
`FURTHER ORDERED, with respect to IPR2015-01493, that the
`
`claims as to which the challenge under 35 U.S.C. § 102(b) as anticipated by
`
`van Zyl-Smit is amended to include claim 15, and thus, the trial includes the
`
`challenge of claims 1–5, 9, 15, 16 and 19 under 35 U.S.C. § 102(b) as
`
`anticipated by van Zyl-Smit.
`
`
`
`Petitioner:
`
`Lisa Kole
`lisa.kole@bakerbotts.com
`
`Steven Lendaris
`steven.lendaris@bakerbotts.com
`
`Paul Ragusa
`paul.ragusa@bakerbotts.com
`
`Jennifer Tempesta
`jennifer.tempesta@bakerbotts.com
`
`
`Patent Owner:
`
`George Quillin
`gquillin@foley.com
`
`Michael Kaminski
`mkaminski@foley.com
`
`
`6
`
`
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