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` Paper No. 9
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` Entered: September 7, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`L’ORÉAL USA, INC.
`Petitioner,
`v.
`UNIVERSITY OF MASSACHUSETTS
`Patent Owner.
`____________
`
`Case IPR2018-00778
`Patent 6,423,327 B1
`____________
`
`
`Before CHRISTOPHER G. PAULRAJ, ROBERT A. POLLOCK, and
`DAVID COTTA, Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
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`IPR2018-00778
`Patent 6,423,327 B1
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`
` INTRODUCTION
`L’Oréal USA, Inc. (“Petitioner” or “L’Oréal”) filed a petition
`requesting an inter partes review of claims 1‒7 and 9 of U.S. Patent No.
`6,423,327 B1 (Ex. 1001, “the ’327 patent”). Paper 2 (“Pet.”). The
`University of Massachusetts (“Patent Owner” or “UMass”) filed a
`Preliminary Response to the Petition. Paper 7 (Prelim. Resp.).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see
`37 C.F.R. §§ 42.4, 42.108. Upon considering the Petition, the Preliminary
`Response, and the cited evidence, we conclude that Petitioner has not
`satisfied its burden under 35 U.S.C. § 314(a) to show that there is a
`reasonable likelihood that it would prevail with respect to at least one of the
`challenged claims.
`
`A.
`
`Related Proceedings
`Petitioner and Patent Owner identify the following district court
`proceeding as relating to the ’327 patent: University of Massachusetts
`Medical School and Carmel Laboratories, LLC v. L’Oréal S.A. and L’Oréal
`USA, Inc., No. 1:17-cv-00868 (D. Del.). Pet. 8–9; Paper 5, 2. Petitioner and
`Patent Owner identify the following inter partes review proceeding as
`related to the ’327 patent: IPR2018-00779, which challenges the
`patentability of U.S. Patent No. 6,645,513 (“the ’513 patent”). Id. The ’327
`patent is the parent of the ’513 patent. Id.
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`B.
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`The ’327 Patent (Ex. 1001)
`The ’327 patent issued July 23, 2002, identifying James G. Dobson,
`Jr. and Michael F. Ethier as co-inventors. Ex. 1001. The patent discloses
`“methods and compositions for enhancing the condition of skin.” Id. at
`1:40–41.
`
`The ’327 patent teaches that “[s]kin includes a surface layer, known as
`the epidermis, and a deeper connective tissue layer, known as the dermis.”
`Id. at 1:19–20. “The dermis is composed of a variety of cell types, including
`fibroblasts.” Id. at 1:24–25. “As skin ages, or is exposed to UV light and
`other environmental insults, changes in the underlying dermis can lead to the
`functional and morphological changes associated with damaged skin.” Id. at
`1:28–31. According to the ’327 patent, “[d]ecreases in the abundance and
`function of products of the fibroblasts, which include collagen and
`proteoglycans, are believed to play major roles in wrinkled and damaged
`skin.” Id. at 1:31–34.
`
`The ’327 patent discloses that the inventors “discovered that
`adenosine stimulates DNA synthesis, increases protein synthesis, and
`increases cell size in cultures of human skin fibroblasts.” Id. at 1:37–39.
`Based on this discovery, the inventors provide methods for “enhancing the
`condition of non-diseased skin,” which comprise “topically administering a
`therapeutically effective amount of adenosine or an adenosine analog to a
`region of non-diseased skin of the mammal containing dermal cell.” Id. at
`1:48–60. The methods require that “[t]he adenosine is added so that it does
`not cause proliferation of the dermal cell.” Id. at 59–60. “The
`therapeutically effective amount of adenosine used in [these] methods is
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`preferably 10-3 M to 10-7 M, more preferably 10-4 M to 10-6 M, and most
`preferably about 10-4 M.” Id. at 2:13–16.
`
`C.
`
`Challenged Claims
`Petitioner challenges claims 1‒7 and 9 of the ’327 patent. Claim 1,
`the only independent claim, is reproduced below:
`
`A method for enhancing the condition of unbroken skin of
`1.
`a mammal by reducing one or more of wrinkling, roughness,
`dryness, or laxity of the skin, without increasing dermal cell
`proliferation, the method comprising topically applying to the
`skin a composition comprising a concentration of adenosine in
`an amount effective to enhance the condition of the skin without
`increasing dermal cell proliferation, wherein the adenosine
`concentration applied to the dermal cells is 10-4 M to 10-7 M.
`Ex. 1001, 10:17‒27.
`The Asserted Grounds of Unpatentability
`D.
`Petitioner challenges the patentability of claims 1‒7 and 9 of the ’327
`patent on the following grounds (Pet. 6):
`Ground References
`
`Basis
`
`Claims
`Challenged
`§ 102(b) 1, 3–7, and 9
`§ 103(a) 1, 3–7, and 9
`§ 103(a) 1‒7 and 9
`
`1
`2
`3
`
`DE ’1071
`DE ’107
`JP ’1532 and DE ’107
`
`
`1 Schönrock et al., DE 195 45 107 A1, published June 5, 1997 (“DE ’107”).
`DE ’107 was originally published in German. Ex. 1003. All citations herein
`are to Exhibit 1004, the English translation of DE ’107 provided by the
`Petitioner.
`2 Murayama, JP H9-157153 A, published June 17, 1997 (“JP ’153”). JP
`’153 was originally published in Japanese. Ex, 1005. All citations herein
`are to Exhibit 1006, the English translation of JP ’153 provided by the
`Petitioner.
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`Petitioner submits the Declarations of Dr. R. Randall Wickett
`(Ex. 1010) and Dr. S. Jamal Mustafa (Ex. 1011) in support of institution of
`inter partes review.
`
`A.
`
` ANALYSIS
`Person of Ordinary Skill in the Art
`Factual indicators of the level of ordinary skill in the art include “the
`various prior art approaches employed, the types of problems encountered in
`the art, the rapidity with which innovations are made, the sophistication of
`the technology involved, and the educational background of those actively
`working in the field.” Jacobson Bros., Inc. v. U.S., 512 F.2d 1065, 1071 (Ct.
`Cl. 1975); see also Orthopedic Equip. Co., Inc. v. U.S., 702 F.2d 1005, 1011
`(Fed. Cir. 1983) (quoting with approval Jacobson Bros.).
`Petitioner contends that the person of ordinary skill “would have a
`Bachelor[’s] degree in Biochemistry or Chemistry with some academic
`exposure to, or industry courses or research in, topical delivery of drugs or
`cosmetic ingredients.” Pet. 25. At this stage in the proceeding, Patent
`Owner does not challenge Petitioner’s definition. Accordingly, for purposes
`of this Decision, we accept Petitioner’s definition, which is supported by
`Dr. Wickett’s declaration (Ex. 1010, ¶ 28) and is consistent with the level of
`skill reflected in the asserted prior art references. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the
`appropriate level of ordinary skill in the art).
`Moreover, we have reviewed the credentials for Drs. Wickett and
`Mustafa (Exs. 1010 and 1011) and, at this stage in the proceeding, we
`consider Drs. Wickett and Mustafa to be qualified to provide opinions on the
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`requisite level of skill and the knowledge of a person of ordinary skill in the
`art at the time of the invention.
`Claim Construction
`B.
`On April 16, 2018, Patent Owner filed a motion under 37 C.F.R.
`§ 42.100(b) requesting that the Board apply a district court-type claim
`construction like that provided in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc) in this proceeding. Paper 6. Patent Owner filed
`the motion within 30 days from filing the petition.3 Patent Owner certified
`that the patent will expire within 18 months from the Notice of Filing Date
`Accorded to Petition. Id. at 1. In addition, Patent Owner represented that
`Petitioner does not oppose the motion. Id. Because Patent Owner satisfies
`all the requirements under 37 C.F.R. § 42.100(b), and because the Board
`interprets claims of an expired patent using the principles set forth in
`Phillips, we grant Patent Owner’s request. Accordingly, in this proceeding,
`we will give claim terms their ordinary and customary meaning, as would be
`understood by a person of ordinary skill in the art, at the time of the
`invention, in light of the language of the claims, the specification, and the
`prosecution history of record. Phillips, 415 F.3d at 1313. We also consider
`the extrinsic evidence presented by Petitioner. Id. at 1317.
`We construe claim terms only to the extent necessary to resolve the
`controversy. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999). For purposes of this decision, we need only
`
`
`3 Due to a technical issue with the original filing, Patent Owner refiled this
`motion on April 27, 2018. Paper 6, 3. Patent Owner represents that the
`original motion was filed using the Board’s E2E system and emailed to the
`Petitioner on April 16, 2018. Id. Patent Owner further represents that
`Petitioner does not oppose refiling the motion. Id.
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`construe the limitation in claim 1 requiring “topically applying to the skin a
`composition comprising a concentration of adenosine” and the limitation
`requiring “wherein the adenosine concentration applied to the dermal cells is
`10-4 M to 10-7 M.” Ex. 1001, 10:18–26.
`
`i. Construction of: “topically applying to the skin a composition
`comprising a concentration of adenosine”
`Claim 1 of the ’327 patent requires “topical” application of a
`composition containing adenosine to “unbroken skin.” Petitioner contends
`that “topical” application of a composition containing adenosine to
`“unbroken skin” requires that “a composition be applied directly to the
`outer, epidermal layer of the skin that is intact and does not have any
`damage, such as wounds or cuts, burns, etc., such that the inner, dermal layer
`of the skin is not exposed.” Pet. 28.
`Patent Owner does not oppose Petitioner’s proposed construction.
`Moreover, Petitioner’s construction is in accord with the plain meaning of
`the terms “topical” and “unbroken.” See, Pet. 28–29 (arguing that the person
`of ordinary skill in the art would have understood “topical” to mean “applied
`to the exterior surface of the target” and “unbroken,” with regard to skin, to
`mean “free from any cuts, wounds, burns, or other damage that would
`expose the inner layers of the skin.”). It is also consistent with the
`Specification and the prosecution history. See, e.g., Ex. 1001, 5:10–29
`(distinguishing topical administration from “oral, subdermal, intradermal, or
`intravenous” administration); Ex. 1009, 67 (arguing that the claimed method
`was distinguishable over a prior art reference because the reference involved
`application of adenosine to “open wounds such as burns”). Accordingly, for
`purposes of this decision, we adopt Petitioner’s proposed construction of the
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`phrase “topically applying to the skin a composition comprising a
`concentration of adenosine.”
`
`ii. Construction of: “wherein the adenosine concentration applied to the
`dermal cells is 10-4 M to 10-7 M.”
`Claim 1 of the ’327 patent requires that “the adenosine concentration
`applied to the dermal cells is 10-4 M to 10-7 M.” Petitioner proposes that this
`language should be construed to require “a concentration of adenosine in the
`composition that is topically applied to an unbroken, epidermal layer of a
`region of the skin containing the dermal cells to be from 10-4 M to 10-7 M
`(i.e., 0.00000265 to 0.00265 wt %).” Pet. 27. Patent Owner contends that
`Petitioner’s proposed construction is contrary to the ordinary meaning of
`“dermal” and proposes that the claim language “be construed to mean what
`it says – that the recited concentration is the concentration that is applied to
`the dermal cells.” Prelim. Resp. 11. We find that Patent Owner has the
`better position.
`There is no dispute that the skin is comprised of multiple layers. Pet.
`13; Ex. 1010 ¶ 31; Prelim. Resp. 13, n. 1. As the ’327 patent explains,
`“[s]kin includes a surface layer, known as the epidermis, and a deeper
`connective tissue layer, known as the dermis.” Ex. 1001, 1:19–20. The
`multiple layers of skin are illustrated in the below figure.
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`The above figure was provided by the Patent Owner and was reproduced
`from the website of the American Academy of Dermatology Association.
`Prelim. Resp. 13, n. 1. It depicts the three separate layers of the skin: the
`epidermis (the top layer), the dermis (the second layer), and subcutaneous fat
`(the bottom layer). Id.
`The fundamental question presented by Petitioner in connection with
`its proposed construction is whether the recited concentration is applied to
`the dermal cells or to the epidermal cells.4 The claim language at issue
`supplies a clear answer. As discussed above, claim 1 recites that the
`concentration of adenosine is “applied to the dermal cells.”
`This construction gives different meanings to the claim terms “the
`skin” and “the dermal cells,” and is thus consistent with the cannon that
`“[d]ifferent claim terms are presumed to have different meanings.” Bd. Of
`Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371
`(Fed. Cir. 2008). In contrast, we do not discern any meaningful difference
`between an “epidermal layer of the skin that is intact,” which is the
`construction we have adopted for “applying to the skin,” and an “epidermal
`layer of a region of the skin containing the dermal cells,” which is the
`construction Petitioner proposes for adenosine “applied to the dermal cells.”
`One would expect that if the Patent Owner had intended both “applications”
`recited in the claim 1 to be made to the same cells, Patent Owner would have
`
`4 Petitioner does not identify, and we do not discern in the current record,
`evidence to suggest that there is a meaningful difference between the
`“epidermal layer of a region of the skin containing the dermal cells” recited
`in Petitioner’s proposed claim construction, and the epidermis. See, Ex.
`1010, ¶ 31 (“Skin is comprised of many layers, including an outer,
`epidermal layer, which covers multiple inner layers (including the dermal
`layers)”).
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`used the same term to describe both applications.
`Construing the phrase “concentration applied to the dermal cells” to
`require what it says – i.e., application to the dermal cells – is consistent with
`the disclosure provided in the Specification. In order for a concentration of
`topically applied adenosine to be “applied to the dermal cells,” it must
`penetrate the epidermis. The Specification expressly contemplates that
`adenosine will penetrate the skin. See e.g., Ex. 1001, 5:13–14 (“For topical
`application, the penetration of the adenosine into skin tissue may be
`enhanced by a variety of methods known to those of ordinary skill in the
`art.”). The Specification also provides examples in which a concentration of
`adenosine matching the high end of that recited in the claims (10-4 M) is
`applied directly to dermal cells (fibroblasts). Id. at 9:5–51. This suggests
`that the inventors contemplated dermal cells receiving the recited
`concentration of adenosine.
`Petitioner argues that “the only disclosure in the ’327 patent where
`adenosine is ‘applied to dermal cells’ is associated with ex vivo methods
`(direct application to dermal fibroblasts in cell cultures), and not in vivo
`methods (topical application to human skin) as required by claim 1.” Pet.
`32. Petitioner further argues that “topical application of adenosine is
`described in the ’327 patent with respect to application of [a] composition
`containing adenosine to a region of the epidermal layer of the skin
`containing dermal cells.” Id. Petitioner contends that these disclosures of in
`vivo topical application contrast with the Specification’s disclosure of “ex
`vivo application of adenosine directly to dermal cells (fibroblasts) in a
`culture medium in a laboratory—i.e. not relating to topical application to
`the skin.” Id. at 33.
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`The disclosures identified by Petitioner provide little guidance with
`respect to the fundamental question posed in connection with Petitioner’s
`proposed construction: is the recited concentration applied to the dermal
`cells or to the epidermal cells? We acknowledge that the Specification
`describes methods where adenosine is topically applied to the epidermis and
`where adenosine is applied ex vivo directly to dermal cells. However, as
`discussed supra, the Specification expressly contemplates that adenosine
`will penetrate the skin. See e.g., Ex. 1001, 5:13–14. Accordingly, these
`disclosures do not speak to whether the concentration recited in the claims
`represents the concentration of adenosine at the time it is applied to the
`epidermis, or whether it instead represents the concentration of adenosine
`after it has penetrated to the dermis.
`We acknowledge that the prosecution history provides some support
`for Petitioner’s proposed construction. In particular, during prosecution, the
`Patent Owner compared prior art concentrations of adenosine that were
`recited as a percentage of the total weight of the composition to the
`concentration recited in the claims as being “applied to dermal cells.” For
`example, Patent Owner stated that the low end of the range recited in DE
`’107 (0.001% wt) “corresponds to 3.88 x 10-5 adenosine” which is “between
`the 10-4M and 10-5M concentration recited in the claims.” Ex. 1009, 84.5
`
`
`5 On August 28, 2018, after Patent Owner filed its Preliminary Response, the
`parties contacted the Board by email. Ex. 3001. In the correspondence
`provided to the Board, Petitioner asserted that Patent Owner failed to “bring
`to the Board’s attention positions that were argued by Patent Owner in
`continuation applications claiming priority to the ‘327 and ‘513 patents,
`which are contrary to the positions Patent Owner now takes in the POPRs.”
`Id. at 4. Petitioner asserted that during prosecution of U.S. Patent
`Application No. 10/680,370 (“the ’370 application”), which includes a
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`While this statement, and related arguments, provide some support for
`Petitioner’s proposed construction, we do not find them sufficient to
`overcome the plain and unambiguous language of the claims. Phillips, 415
`F.3d at 1312 (noting that “[i]t is a ‘bedrock principle’ of patent law that ‘the
`claims of a patent define the invention to which the patentee is entitled the
`right to exclude’” and that it would be “unjust to the public, as well as an
`evasion of the law, to construe [a claim] in a manner different from the plain
`import of its terms.”). More particularly, we do not find in Patent Owner’s
`prosecution arguments an attempt to redefine the term “dermal cells” or to
`disavow claim scope. See Thorner v. Sony Computer Entertainment
`America LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). In this regard, we note
`that the Patent Owner expressly corrected the Examiner when the Examiner
`
`
`limitation like that at issue here, Patent Owner “argued that the
`concentration of ATP in a prior art composition (the ‘649 patent) was
`outside the claimed concentration range of adenosine analog ‘applied to the
`dermal cells.’” Id. Petitioner contends that this position “is contrary to
`Patent Owner’s position in the POPRs that the claimed concentration is the
`concentration that reaches the dermal cells.” Id. Petitioner sought leave to
`file a Reply to address this issue. Id. at 1. We denied Petitioner’s request.
`Id. The Petition expressly anticipated that Patent Owner would make the
`argument that Petitioner now seeks to address. See Pet. 36-37 (“Thus, the
`applicant may take the position in this proceeding that the language ‘the
`adenosine concentration applied to the dermal cells is 10-4 M to 10-7 M’
`refers to the concentration of adenosine that ultimately reaches the dermal
`cells, after topical application to the unbroken epidermal layer of the skin.”).
`Accordingly, Petitioner should have addressed this issue in their
`Petition. Moreover, the arguments made by Patent Owner in connection
`with the ’370 application are substantially similar to those it made – and
`disclosed to the Board – in connection with prosecution of the application
`discussed herein. See, Ex. 1009, 84; Prelim Resp. 17–18. As such, we
`consider the arguments based the ‘370 application to be cumulative to
`arguments already of record.
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`stated in the reasons for allowance that the claims were directed to
`“administering adenosine at a concentration of 10-4 M to 10-7 M, to the skin”
`stating “applicant notes that the claimed concentration of adenosine is
`applied to the dermal cells.” Ex. 1009, 117 (reasons for allowance) and 123
`(Patent Owner’s comments on reasons for allowance).
`Petitioner argues that when adenosine is topically applied (as required
`by claim 1), it is not possible to determine the amount of adenosine that
`would ultimately reach the dermal cells after penetrating the epidermal layer
`of the skin.6 See, Ex. 1010, ¶ 34 (declaration of Dr. Wickett, opining that, in
`1998, the skilled artisan would have understood that “it was not possible to
`calculate with any reasonable certainty an amount of adenosine that reaches
`the dermal cells when topically applied in view of the numerous variables
`that would need to be identified and factored into any such calculation.”).
`Ex. 1010, ¶ 34. Thus, according to Petitioner, the “only way the claimed
`concentration would make sense (i.e., be capable of being determined) is [if]
`the claimed concentration of adenosine is the amount in the composition that
`is topically applied, and not the amount that reaches the dermal cells.” Id.
` ¶ 35. In addition, Petitioner argues that construing the recited concentration
`to mean the amount applied to the dermal cells would render the claims
`invalid for failing to provide adequate written description. Pet. 37–38.
`Patent Owner disputes Petitioner’s contention that it would not have
`been possible to determine the amount of adenosine that would penetrate the
`epidermis. Prelim. Resp. 21 (citing Exhibit 2002, a published patent
`
`
`6 Dr. Mustafa opines, “at least some of any concentration of adenosine that is
`topically applied to the epidermis will be metabolized by epidermal cells and
`not reach the dermal layer.” Ex. 1011, ¶ 14.
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`application assigned to L’Oréal, as evidence of a skin construct that could
`have been used to “assess impact on the dermal layer when a compound is
`applied topically to the epidermis”). Patent Owner also disputes Petitioner’s
`contention that the Specification fails to support its proposed construction.
`Prelim. Resp. 20; see also id. at 15 (asserting that “the patent identifies the
`proper concentration at the dermal layer and verifies it using ex vivo testing
`of dermal cells, and it explains that application of that concentration at the
`dermal layer can be achieved by applying a compound topically in a way
`where the proper concentration of adenosine penetrates to the dermal
`layer”).
`We need not resolve these disputes because, even if we credit
`Petitioner’s assertion that Patent Owner’s proposed construction renders the
`claimed process inoperable and/or invalid for lack of written description
`support, the language of the claims is unambiguous. Phillips, 415 F.3d at
`1327 (noting that “the maxim that claims should be construed to preserve
`their validity . . . [has been] limited . . . to cases in which ‘the court
`concludes, after applying all the available tools of claim construction, that
`the claim is still ambiguous’”). Where the claim language is unambiguous,
`the Federal Circuit has rejected arguments, like those presented by
`Petitioner, that construing the claim as written would render the claim
`invalid and/or produce a nonsensical result. See Chef America, Inc. v.
`Lamb–Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (listing cases and
`stating, “[t]his court . . . repeatedly and consistently has recognized that
`courts may not redraft claims, whether to make them operable or to sustain
`their validity”). In Chef America, the court declined to construe a claim that
`required “heating . . . dough to a temperature in the range of about 400° F. to
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`850° F . . . as if it read ‘heating the ... dough at a temperature in the range
`of’” 400° F. to 850° F, even though heating the dough “to” the claimed
`temperature would burn the dough to a crisp. Id. at 1373 (emphasis added).
`The Federal Circuit explained “we have repeatedly declined to rewrite
`unambiguous patent claim language” so that it can “perform the function the
`patentees intended.” Id. at 1375.
`Here, as in Chef America, the disputed claim language is
`unambiguous. It requires an adenosine concentration “applied to the dermal
`cells.” Although “a patentee can act as his own lexicographer to specifically
`define terms of a claim contrary to their ordinary meaning,” Process Control
`Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999), as
`discussed above, we discern nothing in the Specification or the prosecution
`history that suggests the Patent Owner defined “dermal cells” to mean
`anything other than “dermal cells.” Accordingly, we construe the
`“concentration applied to the dermal cells” to mean what it says – that the
`recited concentration is the concentration that is applied to the dermal cells.
`C. Ground 1: Anticipation by DE ’197
`Petitioner asserts that claims 1, 3‒7, and 9 are anticipated by DE ’107.
`Pet. 40‒57. We have reviewed Petitioner’s assertions and supporting
`evidence, and, for the reasons discussed below, we conclude that Petitioner
`has not demonstrated a reasonable likelihood of prevailing in showing that
`claims 1, 3–7, and 9 were anticipated by DE ’107.
`
`i. Asserted Prior Art
`DE ’107
`DE ’107 relates to the “[u]se of an effective content of adenosine in
`cosmetic or dermatological preparations” and, more particularly, the “[u]se
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`of adenosine for enhancing cell proliferation in human skin.” Ex. 1004,
`Abstract. DE ’107 discloses:
`The present invention . . . includes a cosmetic process for
`protection of the skin and hair against oxidative or
`photoxidative processes which is characterized in that a
`cosmetic agent containing an effective adenosine concentration
`is applied in sufficient quantity to the skin or hair.
`
`The adenosine content in said preparations is preferably
`0.001% by weight to 10% by weight, and particularly 0.01% by
`weight to 6% by weight relative to the total weight of the
`preparations.
`
`Id. at 14:10–20. DE ’107 discloses 6 examples, each of which include 0.10
`% wt. adenosine. Id. at 14:35–17:3. DE ’107 claims “the use of adenosine
`for enhancing cell proliferation in human skin.” Id. at 18:3–4. As discussed
`above DE ’107 was considered during prosecution of the ’327 patent.
`
`ii. Analysis
`Claim 1 requires that “the adenosine concentration applied to the
`dermal cells is 10-4 M to 10-7 M.” Petitioner finds that this element is
`disclosed in DE ’107 by applying a claim construction that interprets this
`limitation to require a concentration “applied to an unbroken, epidermal
`layer of a region of the skin containing the dermal cells.” As discussed
`above, we have construed the claims to require that the recited concentration
`be applied to the dermal cells. Because the Petition does not identify
`evidence reflecting the concentration of adenosine applied to the dermal
`cells, we find that Petitioner has not demonstrated a reasonable likelihood of
`prevailing in showing that claims 1, 3–7, and 9 were anticipated by DE ’107.
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`D. Ground 2: Obviousness in view of DE ’197
`Petitioner asserts that claims 1, 3‒7, and 9 would have been obvious
`in view of DE ’107. Pet. 57–60. We have reviewed Petitioner’s assertions
`and supporting evidence, and, for the reasons discussed below, we conclude
`that Petitioner has not demonstrated a reasonable likelihood of prevailing in
`showing that claims 1, 3–7, and 9 were obvious in view of DE ’107.
`
`i. Disclosures of the Asserted Prior Art
`DE ’107
`
`The disclosure of DE ’107 is discussed supra p. 15.
`
`ii. Analysis
`Claim 1 requires that “the adenosine concentration applied to the
`dermal cells is 10-4 M to 10-7 M.” Petitioner finds that this element is
`disclosed in DE ’107 by applying a claim construction that interprets this
`limitation to require a concentration “applied to an unbroken, epidermal
`layer of a region of the skin containing the dermal cells.” As discussed
`above, we have construed the claims to require that the recited concentration
`be applied to the dermal cells. Because the Petition does not identify
`evidence reflecting the concentration of adenosine applied to the dermal
`cells, we find that Petitioner has not demonstrated a reasonable likelihood of
`prevailing in showing that claims 1, 3–7, and 9 were obvious in view of DE
`’107.
`
`
`
`E. Ground 3: Obviousness in view of DE ’197 and JP ’153
`Petitioner asserts that claims 1‒7 and 9 would have been obvious in
`view of the combination of DE ’107 and JP ’153. Pet. 62–77. We have
`reviewed Petitioner’s assertions and supporting evidence, and, for the
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`reasons discussed below, we conclude that Petitioner has not demonstrated a
`reasonable likelihood of prevailing in showing that claims 1–7, and 9 would
`have been obvious in view of the combination of DE ’107 and JP ’153.
`
`i. Disclosures of the Asserted Prior Art
`DE ’107
`
`The disclosure of DE ’107 is discussed supra p. 15.
`JP ’153
`
`JP’153 discloses the use of topical skin compositions in order to
`prevent signs of ageing, including wrinkles. Ex. 1006, ¶ 15. More
`specifically, JP ’153 discloses that “adenosine and derivatives thereof, and
`hamamelitannin, an extract of two or more plants” exert a synergistic effect
`when they are used concomitantly in “preparations for external use on the
`skin.” Id. ¶¶ 6–7. JP ’153 further teaches that compounds that include
`either adenosine or hamamelitannin, but not both, do not achieve the same
`effect. Id. ¶ 11 and Tables 1 and 2. JP ’153 discloses that compositions
`comprising 0.01–10% wt. adenosine are “suitable” and exemplifies
`compositions containing adenosine in amount of 0.02%. Id. ¶¶ 12, 21, 22.
`
`ii. Analysis
`Claim 1 requires that “the adenosine concentration applied to the
`dermal cells is 10-4 M to 10-7 M.” Petitioner finds that this element is
`disclosed in the combination of DE ’107 and JP ’153 by applying a claim
`construction that interprets this limitation to require a concentration “applied
`to an unbroken, epidermal layer of a region of the skin containing the dermal
`cells.” As discussed above, we have construed the claims to require that the
`recited concentration be applied to the dermal cells. Because the Petition
`does not identify evidence reflecting the concentration of adenosine applied
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`to the dermal cells, we find that Petitioner has not demonstrated a reasonable
`likelihood of prevailing in showing that claims 1, 3–7, and 9 were obvious in
`view of the combination of DE ’107 and JP ’153.
` CONCLUSION
`For the foregoing reasons, we deny the Petition and do not institute
`trial as to any of the challenged claims of the ’327 patent. Specifically, we
`decline to institute inter partes review on the ground that claims 1, 3–7, and
`9 are anticipated by DE ’107, on the ground that claims 1, 3–7, and 9 would
`have been obvious in view of DE ’107, and on the ground that claims