`
` ________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ________________
`
`L’ORÉAL USA, INC.,
`
`Petitioner,
`
`v.
`
`LIQWD, INC.,
`
`Patent Owner.
`
` ________________
`
`Case IPR2018-00778
`
`Patent No. 6,423,327 B1
`
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450 Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I. REQUEST FOR RELIEF .................................................................................... 1
`
`II. ARGUMENT ....................................................................................................... 1
`
`A. The Board’s interpretation amounts to an erroneous application of the
`
`law and is unreasonable in view of relevant factors .......................................... 1
`
`1. The Decision misapplies Phillips in construing “dermal cells” .................... 2
`
`a. The Decision overlooked the remaining language of the claim.................... 3
`
`b. The Decision improperly found no prosecution disclaimer .......................... 5
`
`i. The Board acknowledged PO’s characterization of the claims, but
`
`improperly focused only on “dermal cells” ......................................................... 5
`
`ii. PO’s statements after prosecution was closed were insufficient to rescind
`
`disclaimer of subject matter made to obtain allowance ...................................... 8
`
`c. The Decision misapprehends the specification ...........................................10
`
`2. The Board misconstrued Petitioner’s proposed interpretation ....................10
`
`B. The Board’s interpretation rewrites the claim as PO intended................12
`
`C. The Board’s interpretation is erroneous as it fails under 35 U.S.C. §112
`
`
`
`13
`
`D. The Decision misapplies Chef America, which is distinguishable ............14
`
`III. CONCLUSION ..................................................................................................15
`
`
`
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`ACTV, Inc. v. Walt Disney Co.,
`346 F.3d 1082 (Fed. Cir. 2003) .......................................................................... 3
`
`Biogen Idec, Inc. v. GlaxoSmithKline LLC,
`
`713 F.3d 1090 (Fed. Cir. 2013) ....................................................................... 5
`
`Cardinal Chem. Co. v. Morton Int'l,
`
`508 U.S. 83 (1993)........................................................................................... 7
`
`Chef America, Inc. v. Lamb-Watson, Inc.,
`
`358 F.3d 1371 (Fed. Cir. 2004) ........................................................ 12, 14, 15
`
`Hakim v. Cannon Avent Group, PLC,
`
`479 F.3d 1313 (Fed. Cir. 2007) ....................................................................... 9
`
`Intellicall, Inc. v. Phonometrics, Inc.,
`
`952 F.2d 1384 (Fed. Cir. 1992) ....................................................................... 6
`
`Modine Mfg. Co. v. United States I.T.C.,
`
`75 F.3d 1545 (Fed. Cir. 1996) .......................................................................14
`
`Palo Alto Networks, Inc. v. Juniper Networks, Inc.,
`
`IPR2013-00369 (P.T.A.B. Feb. 14, 2014) ....................................................... 1
`
`Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................. passim
`
`Senmed, Inc. v. Richard-Allan Med. Indus., Inc.,
`
`888 F.2d 815 (Fed. Cir. 1989) ......................................................................... 7
`
`Technology Props. Ltd. v. Huawei Techs. Co.,
`
`849 F.3d 1349 (Fed. Cir. 2017) ...................................................................7, 8
`
`Unique Concepts, Inc. v. Brown,
`
`939 F.2d 1558 (Fed. Cir. 1991) ....................................................................... 8
`
`Uship Intellectual Props., LLC v. United States,
`
`714 F.3d 1311 (Fed. Cir. 2013) ....................................................................... 5
`
`
`
`
`
`ii
`
`
`
`Statutes
`Statutes
`
`35 U.S.C. § 112 ................................................................................................. 13, 14
`35 U.S.C. § 112 ................................................................................................. 13,14
`
`
`
`Rules
`Rules
`
`37 C.F.R. § 1.104(e) .................................................................................................. 9
`37 CPR. § 1.104(6) .................................................................................................. 9
`37 C.F.R. § 1.114(b) .................................................................................................. 9
`37 CPR. § 1.114(b) .................................................................................................. 9
`37 C.F.R. § 42.71(c) ................................................................................................... 1
`37 CPR. § 42.71(c) ................................................................................................... 1
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`37 CPR. § 42.71(d) .................................................................................................. 1
`
`
`
`
`iii
`iii
`
`
`
`I. REQUEST FOR RELIEF
`
`
`
`In response to the Decision Denying Institution of IPR2018-000778
`
`(“Decision,” Paper 9) finding that claims 1-7 and 9 of U.S. Patent No. 6,423,327
`
`(“the ‘327 patent”) are not unpatentable as set forth in Grounds 1-3 of the Petition
`
`for Inter Partes Review (“Petition,” Paper 2), Petitioner respectfully requests
`
`rehearing under 37 C.F.R. § 42.71(d) of Grounds 1-3.
`
`II. ARGUMENT
`
`A party may request rehearing of a decision by the Board whether to
`
`institute a trial, which the Board will review for an abuse of discretion. 37 C.F.R.
`
`§42.71(c). “An abuse of discretion may be indicated if a decision is based on an
`
`erroneous interpretation of law, if a factual finding is not supported by substantial
`
`evidence, or if the decision represents an unreasonable judgment in weighing
`
`relevant factors.” Palo Alto Networks, Inc. v. Juniper Networks, Inc., IPR2013-
`
`00369, Paper 39, 2–3 (P.T.A.B. Feb. 14, 2014).
`
`In the current proceeding, Petitioner respectfully submits that the Board
`
`misapplied the standard for claim construction, erred in finding that prosecution
`
`disclaimer did not apply, and overlooked evidence of record in interpreting the
`
`language “applied to the dermal cells,” which interpretation the Board relied on to
`
`deny institution of Grounds 1-3. Rehearing is therefore respectfully requested.
`
`A. The Board’s interpretation amounts to an erroneous application
`of the law and is unreasonable in view of relevant factors
`
`
`
`
`
`
`1
`
`
`
`The Board correctly cited Phillips as requiring claim terms be given “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,” as well as the extrinsic
`
`evidence submitted with the Petition. (Paper 9 at 6 (citing Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1313, 1317 (Fed. Cir. 2005) (en banc).) However, led to error by
`
`PO, the Board’s claim interpretation is clearly erroneous as it (1) incorrectly
`
`applied Phillips by interpreting only two words of the claim, i.e. “dermal cells,” in
`
`isolation, overlooking the remaining language of the claims and therefore failing to
`
`accord sufficient weight to the specification and file history or Petitioner’s
`
`evidence, and (2) misapprehended Petitioner’s proposed construction.
`
`1. The Decision misapplies Phillips in construing “dermal cells”
`
`Phillips confirmed that the “ordinary and customary” meaning “is the
`
`meaning that the term would have to a person of ordinary skill in the art in
`
`question at the time of the invention, i.e., as of the effective filing date of the patent
`
`application.” Phillips, 415 F.3d at 1313. However, Phillips also confirmed that, in
`
`order to arrive at the “ordinary and customary” meaning, the skilled artisan is
`
`deemed to read the language not in isolation but in the context of the entire patent,
`
`including the remainder of the claim language, the specification, and the
`
`prosecution history. Id. In other words, Phillips requires that the “ordinary and
`
`
`
`2
`
`
`
`customary” meaning of the disputed language is determined by considering the
`
`remaining language of the claim, the specification, the prosecution history, and any
`
`pertinent extrinsic evidence. In the current proceeding, however, the Board was
`
`erroneously led to misapply Phillips by starting with the “plain and unambiguous”
`
`meaning of only two words, i.e., “dermal cells,” in isolation, resulting in a legally
`
`erroneous claim interpretation. (Paper 7 at 11; Paper 9 at 8.)
`
`a. The Decision overlooked the remaining language of the claim
`
`The Decision is improper as it misapplied Phillips by failing to interpret the
`
`term “dermal cells” within the context of the immediately-preceding words
`
`“applied to,” and the single recited application step. Cf. Phillips, 415 F.3d at 1314
`
`(“the claims themselves provide substantial guidance as to the meaning of
`
`particular claim terms”); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088
`
`(Fed. Cir. 2003) (“[t]he context of the surrounding words of the claim also must be
`
`considered in determining the ordinary and customary meaning of those terms”),
`
`quoted in Phillips, 415 F.3d at 1314. Contrary to PO’s argument, which the Board
`
`accepted, when “dermal cells” is read in context with “applied to,” and the context
`
`of the only recited step of “topically applying to the skin,” the claim language is
`
`not “plain and unambiguous.” (Paper 7 at 12; Paper 9 at 12.)
`
`Indeed, the Board appears to have overlooked that claim 1 of the ‘327 patent
`
`recites only a single application step (“the method comprising topically applying
`
`
`
`3
`
`
`
`to the skin a composition comprising a concentration of adenosine…”),
`
`subsequently reciting that a concentration of adenosine is “applied to the dermal
`
`cells.” (Paper 2 at 30.) Instead, the Board erroneously interpreted claim 1 to
`
`include two separate “applications,” one to the skin and one to the dermal cells.
`
`(Paper 9 at 9: “if [PO] had intended both ‘applications’ recited in the claim 1 to be
`
`made to the same cells, [PO] would have used the same term to describe both
`
`applications” (emphasis added).) This was erroneous.
`
`In the phrase “applied to the dermal cells,” the term “applied” clearly refers
`
`to the previous step of “topically applying to the skin a composition comprising a
`
`concentration of adenosine,” when read in context with the remainder of the
`
`claim. (Paper 2 at 31.) To be sure, the language “the adenosine concentration
`
`applied” would lack antecedent basis otherwise. Thus, the Board overlooked that
`
`the term “applied to the dermal cells” refers to the previously-recited topical
`
`application step. As such, because there is only one application step in the claim,
`
`the Board erred in interpreting the term “applied to dermal cells” in isolation from
`
`the rest of the claim language, i.e. as a separate application step. (Paper 9 at 9.)
`
`Indeed, the Board correctly found that the term “topically applying to the
`
`skin” means topical application to the “epidermal layer of the skin that is
`
`intact…such that the dermal layer of the skin is not exposed.” (Id. at 7-8.)
`
`However, as explained in the Petition, this correct interpretation of “topically
`
`
`
`4
`
`
`
`applying to the skin” renders the Board’s interpretation of “applied to the dermal
`
`cells” ambiguous. (Paper 2 at 33.) In particular, because the Decision correctly
`
`found that the skin is intact, the “dermal cells” are not accessible for application.
`
`(Paper 9 at 7.) Thus, because there is only one application step recited in the
`
`claim, i.e. a topical application step to the unbroken, outer layer of the skin “such
`
`that the dermal layer of the skin is not exposed,” it is unclear how a concentration
`
`of adenosine could be “applied to the dermal cells” in this single step, which
`
`renders the Board’s interpretation ambiguous, and therefore clearly erroneous.
`
`b. The Decision improperly found no prosecution disclaimer
`
`It is well accepted that an applicant's statements to the PTO characterizing
`
`its invention may give rise to prosecution disclaimer. Uship Intellectual Props.,
`
`LLC v. United States, 714 F.3d 1311, 1315 (Fed. Cir. 2013). Prosecution
`
`disclaimer can arise from both claim amendments and arguments. Biogen Idec,
`
`Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013). Importantly,
`
`the scope of surrender is not limited to what was absolutely necessary to avoid a
`
`prior art reference; patentees may surrender more than necessary. Technology
`
`Props. Ltd. v. Huawei Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017).
`
`i. The Board acknowledged PO’s characterization of the claims, but
`
`improperly focused only on “dermal cells”
`
`In the Decision, the Board acknowledged that during prosecution, PO
`
`
`
`5
`
`
`
`“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 the dermal cells.’” (Paper 9 at 11 (emphasis added).) In other
`
`words, the Board apparently agreed with Petitioner that, in order to secure
`
`allowance of the ‘327 patent, PO itself interpreted the language “the amount of
`
`adenosine applied to the dermal cells” as the “concentration of adenosine in the
`
`composition that is applied to the unbroken” skin. (Paper 2 at 23-24; Paper 9 at 11
`
`(agreeing “[PO] stated that the low end of the range recited in [the composition of]
`
`DE’107 (0.001%wt) ‘corresponds to [a] concentration recited in the claims’”).)
`
`However, the Board did not find PO’s clear and unmistakable position
`
`during its attempt to secure allowance of the claims “sufficient to overcome the
`
`plain and unambiguous language of the claims,” or to be “an attempt to redefine
`
`the term ‘dermal cells’ or to disavow claim scope.” (Paper 9 at 12, relying on
`
`Phillips for the proposition “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.’”) This was an erroneous interpretation of law, however, as it
`
`is well accepted that the terms in a claim are not given their ordinary meaning
`
`when it appears from the patent and file history that the terms were used
`
`differently by the applicant. See, e.g., Intellicall, Inc. v. Phonometrics, Inc., 952
`
`F.2d 1384, 1387 (Fed. Cir. 1992). Indeed, to be fair to the public, a patentee is not
`
`
`
`6
`
`
`
`entitled to an interpretation that would alter the indisputable public record
`
`consisting of the claims, the specification and the prosecution history, and treat the
`
`claims as a "nose of wax." Senmed, Inc. v. Richard-Allan Med. Indus., Inc., 888
`
`F.2d 815, 819 n.8 (Fed. Cir. 1989),overruled in part on other grounds by Cardinal
`
`Chem. Co. v. Morton Int'l, 508 U.S. 83 (1993).
`
`As discussed above and in the Petition, it was an erroneous application of
`
`Phillips to focus on the language of only two words, i.e. “dermal cells,” without
`
`considering the full context of the remaining language of the claim, when the
`
`Board considered whether PO’s clear and unmistakable characterization of the
`
`language of the claims was, in fact, a prosecution disclaimer. (Supra, §II(A)(1)(a);
`
`Paper 2 at 19-20, 35.) As explained in the Petition, PO added the limitation
`
`reciting a concentration of adenosine “applied to the dermal cells,” and
`
`subsequently argued that the claimed concentration was distinguishable from the
`
`concentration in the compositions of DE’107 and Hartzshtark. (Paper 2 at 20,
`
`citing Ex. 1009, at 85-86; see also id. at 90.) The amendment and statements made
`
`by PO to overcome the references and obtain allowance of the claims indeed
`
`constitutes disclaimer of any interpretation of a concentration of adenosine
`
`“applied to the dermal cells” other than the concentration in the composition
`
`topically applied to unbroken skin, as it is well accepted that claims may not be
`
`construed one way in order to obtain their allowance and in a different and
`
`
`
`7
`
`
`
`inconsistent way in a subsequent proceeding. Unique Concepts, Inc. v. Brown, 939
`
`F.2d 1558, 1562 (Fed. Cir. 1991).
`
`Notably, PO did not distinguish the prior art by relying on the concentration
`
`that reaches the dermal cells. That PO may have disclaimed more than was
`
`necessary to distinguish from the prior art is inapposite, as “the scope of surrender
`
`is not limited to what is absolutely necessary to avoid a prior art reference;
`
`patentees may surrender more than necessary.” Technology Props., 849 F.3d at
`
`1359. “The question is what a person of ordinary skill would understand the
`
`patentee to have disclaimed during prosecution, not what a person of ordinary skill
`
`would think the patentee needed to disclaim during prosecution.” Id. Dr. Wickett
`
`testified, and PO did not provide any evidence to the contrary, that a skilled artisan
`
`would have understood that the concentration of adenosine “applied to the dermal
`
`cells” meant the concentration in the composition based on PO’s remarks during
`
`prosecution. (Paper 2 at 36, citing Ex. 1010 at ¶33.)
`
`ii. PO’s statements after prosecution was closed were insufficient
`to rescind disclaimer of subject matter made to obtain allowance
`
`Although the Board noted that PO subsequently stated in its comments on
`
`the Examiner’s reasons for allowance that the concentration is applied to the
`
`dermal cells, the Board erroneously gave this statement more weight than was
`
`appropriate, as this bare statement did not inform the Examiner or the public how
`
`the “correction” applied to the arguments made to overcome the prior art. (Paper 9
`
`
`
`8
`
`
`
`at 12-13.) See Hakim v. Cannon Avent Group, PLC, 479 F.3d 1313, 1318 (Fed.
`
`Cir. 2007) (“Although a disclaimer made during prosecution can be rescinded,
`
`permitting recapture of the disclaimed scope, the prosecution history must be
`
`sufficiently clear to inform the examiner that the previous disclaimer, and the prior
`
`art that it was made to avoid, may need to be re-visited” (emphasis added).); see
`
`also 37 C.F.R. § 1.104(e) (“Failure by the examiner to respond to any statement
`
`commenting on reasons for allowance does not give rise to any implication.”).
`
`Furthermore, the Examiner’s Notice of Allowance acted to close prosecution
`
`on the merits pursuant to 37 C.F.R. § 1.114(b). (See Ex. 1009, 77 (“Prosecution on
`
`the merits is closed.”).) Thus, PO’s subsequent statement after prosecution was
`
`closed was not sufficient to revoke its prior disclaimer of subject matter made
`
`during prosecution and in order to secure allowance, for this additional reason.
`
`Finally, PO was still arguing that “applied to the dermal cells” was properly
`
`understood as regards the concentrations of active agent in the cited prior art
`
`compositions in prosecution of continuation applications “in 2005 (years after the
`
`patents…issued).” (Ex. 3001.1) Thus, despite its legally insufficient “correction,”
`
`PO was continuing to put the public on notice many years after issuance of the
`
`
`
`1 Petitioner was denied a chance to respond to PO’s improper argument in the
`
`August 28, 2018, email. However, PO’s admissions therein are properly cited in
`
`this Paper, as they are a part of the record prior to the Institution Decision.
`
`
`
`9
`
`
`
`‘327 patent that the concentration “applied to the dermal cells” should be
`
`interpreted as the concentration in the compositions topically applied to the skin.
`
`Accordingly, the Board erred in finding no disavowal of claim scope in view
`
`of PO’s clear and unmistakable prosecution arguments and amendment.
`
`c. The Decision misapprehends the specification
`
`The Board stated that the phrase “dermal cells” was unambiguous, and that
`
`“nothing in the Specification or prosecution history suggests that [PO] defined
`
`‘dermal cells’ to mean anything other than ‘dermal cells.’” (Paper 9 at 15.)
`
`However, as discussed above, it was an erroneous application of Phillips for the
`
`Board to focus on the language of only two words, “dermal cells,” without
`
`considering the full context of the remaining language of the claim, when the
`
`Board evaluated the specification for proper claim interpretation. (Supra,
`
`§II(A)(1)(a).) Indeed, direct topical application of a concentration of adenosine
`
`“applied to the dermal cells” is not described in the specification at all, and thus
`
`cannot support the Board’s interpretation. (Paper 2 at 32.)
`
`For all of the above reasons, Petitioner submits that the Board’s claim
`
`interpretation misapplies Phillips, and respectfully requests rehearing thereof.
`
`2. The Board misconstrued Petitioner’s proposed interpretation
`
`The Board found fault with Petitioner’s proposed construction, stating “we
`
`do not discern any meaningful difference between ‘epidermal layer of the skin that
`
`
`
`10
`
`
`
`is intact’… and ‘epidermal layer of a region of the skin containing the dermal
`
`cells.’”2 (Paper 9 at 9 (emphasis added).) However, when read in the context of the
`
`full claim, the specification, and file history, the difference is clear.
`
`Petitioner’s proposed construction of “topically applied to the unbroken,
`
`outer epidermal layer of a region of the skin containing the dermal cells” conveys
`
`that the concentration of adenosine is that in the composition topically applied to
`
`an unspecified region of the skin containing the dermal cells. (Paper 2 at 38, citing
`
`Ex. 1001, 5:12, 5:25-26.) This interpretation is supported by the specification, e.g.:
`
`The method includes topically administering a composition
`
`including a therapeutically effective amount of adenosine to
`
`a region of skin of the mammal containing the dermal cell,
`
`wherein addition of
`
`the adenosine does not cause
`
`proliferation of the dermal cell…
`
`(Paper 2 at 31-32, citing inter alia, col. 2, lines 3-8). In addition, as discussed in
`
`detail above and in the Petition, the prosecution history also supports this
`
`interpretation, when the phrase “dermal cells” is considered in context of the entire
`
`claim. (Supra, §II(A)(1)(a); Paper 2 at 34-36, citing Ex. 1009, 83-87). In view of
`
`PO’s clear and unmistakable characterizations in the prosecution of the ‘327
`
`patent, the public was on notice that a determination of the concentration “applied
`
`
`
`2 The Board’s reasoning that different terms have different meanings does not
`
`change the claim to recite an additional step of “appl[ying] to the dermal cells.”
`
`
`
`11
`
`
`
`to the dermal cells” was correctly made by determining the concentration in the
`
`composition. (Id.) The Board overlooked that this is made even more clear in
`
`view of 1) the lack of any methodology disclosed or referenced in the specification
`
`for determining a concentration that reaches the dermal cells, and 2) the
`
`impossibility of determining a concentration that “penetrates to” or “reaches” the
`
`dermal cells through the epidermal layer. (Id.; see also §II.C, infra.)
`
`B. The Board’s interpretation rewrites the claim as PO intended
`
`Although not expressly stated, the Board implicitly concludes that “applied
`
`to the dermal cells” means “reached” or “received by” the dermal cells, or
`
`“penetrates through” the skin to reach the dermal cells. (Paper 9 at 10-11.) Such
`
`an interpretation improperly alters the meaning of “topically applying” and
`
`“applied,” rewriting the claim as PO intended it to read, which is erroneous. See
`
`Chef America, Inc. v. Lamb-Watson, Inc., 358 F.3d 1371, 1373 (Fed. Cir. 2004).
`
`For example, the Board’s assertion that the specification “expressly
`
`contemplates that adenosine will penetrate the skin” (Paper 9 at 10 (emphasis
`
`added)) cannot be relied on to change the meaning of the term “applied,” because
`
`unless clearly articulated by the patentee, the same term in a claim must have the
`
`same meaning. See id.; Phillips, 415 F.3d at 1314. Rather, for the Board’s
`
`interpretation to be legally proper, the term “applied” in the phrase “applied to the
`
`dermal cells” must necessarily be interpreted to have the same meaning as
`
`
`
`12
`
`
`
`“applying” in “topically applying to the skin.” Phillips, 415 F.3d at 1314. For the
`
`same reason, the term “applied” cannot be changed to mean “received” or
`
`“reached.” Accordingly, the Board’s interpretation is erroneous.
`
`C. The Board’s interpretation is erroneous as it fails under 35 U.S.C. §112
`
`Furthermore, as explained in the Petition and supported by two expert
`
`declarations3, the Board’s interpretation lacks both enablement and written
`
`description support, and is therefore legally erroneous for this additional reason.
`
`Dr. Wickett testified there was no known way of determining the amount of
`
`adenosine that would be received by, or reach, a dermal cell in 1998, due to the
`
`numerous factors that require consideration and would change any result. (Paper 2
`
`at 37, citing Ex. 1011, at 34-35.4) And, as noted in the Petition, the ‘327 discloses
`
`no such method. (Id. at 38.) In addition, as Dr. Mustafa testified, the concentration
`
`of adenosine would necessarily change from what is topically applied to the skin,
`
`due to metabolism in the epidermal layer prior to reaching the dermal layer. (Id.)
`
`Although the Board found Drs. Wickett and Mustafa to be qualified experts and
`
`recognized their testimony (see Paper 9 at 5, 13), it erroneously did not give either
`
`
`
`3 In contrast, PO only offered unsupported attorney argument for its positions.
`4 To the extent the Board relied on Ex. 2002 for determination of a concentration
`
`that reaches the dermal cell, the Board misapprehended the teaching therein as
`
`there is no such disclosure in Ex. 2002, which discloses a method for evaluating
`
`the effect of a composition, not the concentration that reaches a dermal cell.
`
`
`
`13
`
`
`
`Declaration weight, contrary to the decision in Phillips. See 415 F.3d at 1318.
`
`Finally, the Board’s reliance on ex vivo testing in an attempt to establish that
`
`“the inventors contemplated dermal cells receiving the recited concentration of
`
`adenosine” is contradicted by the inventors’ declaration submitted during
`
`prosecution equating the concentration applied ex vivo to the amount in the
`
`composition of DE‘107, i.e., applied to the skin. (See, Paper 2 at 19, 21, and 41,
`
`citing Ex. 1009, at 84, 91). Thus, the ex vivo testing does not provide written
`
`description or enablement support for the Board’s interpretation. To the contrary,
`
`the inventors contemplated in their declaration that there was no difference
`
`between the concentration “applied to dermal cells” and topical application. (Id.)
`
`Accordingly, the Board’s implicit interpretation of “applied” to mean “reached” or
`
`“received” would render the claims invalid under 35 U.S.C. §112 for lack of
`
`enablement and written description support, and is legally erroneous for this
`
`additional reason. See Modine Mfg. Co. v. United States I.T.C., 75 F.3d 1545,
`
`1557 (Fed. Cir. 1996) (if claims “are amenable to more than one construction, they
`
`should when reasonably possible be interpreted so as to preserve their validity”).
`
`D. The Decision misapplies Chef America, which is distinguishable
`
`The Decision misapplies Chef America by not affording proper weight to the
`
`context of the claim, specification, and file history. In particular, rather than merely
`
`dismissing construction of the challenged claim term as “unambiguous,” the court
`
`
`
`14
`
`
`
`in Chef America properly conducted a thorough analysis of the claim language,
`
`specification, and file history to determine that the specification supported, and
`
`patentee there intended for, the meaning of the term “heating … dough to a
`
`temperature in the range of about 400°F” to mean “to,” in view of the prosecution.
`
`Chef America, 358 F.3d at 1373 (emphasis added). In contrast, however, direct
`
`topical application of the recited concentration of adenosine “applied to the dermal
`
`cells” is not supported in the ‘327 patent. (Paper 2 at 32; §II(A)(1)(c), supra.)
`
`Likewise, here PO added the limitation “applied to the dermal cells” and argued
`
`during prosecution that prior art compositions did not meet the limitation, but
`
`failed to argue or suggest that the adenosine in the prior art compositions would
`
`not “reach the dermal cells” in the recited concentrations. (Paper 2 at 34;
`
`§II(A)(1)(b)(i), supra.) Thus, Chef America is distinguishable and does not
`
`support the Board’s interpretation.
`
`III. CONCLUSION
`
`
`
`For the reasons set forth above, Petitioner respectfully requests rehearing of
`
`Grounds 1-3 of the Petition for Inter Partes Review.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: October 9, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Michelle E. O’Brien, Reg. No. 46,203/
`Michelle E. O’Brien, Reg. 46,203
`
`Timothy J. Murphy, Reg. No. 62,585
`ATTORNEYS FOR PETITIONER
`
`
`
`15
`
`
`
`CERTIFICATION OF SERVICE 37 C.F.R. § 42.6(e)
`
`
`
`The undersigned hereby certifies that the above-captioned REQUEST FOR
`
`REHEARING UNDER 37 C.F.R. § 42.71(d) was served in its entirety on
`
`October 9, 2018, on the following parties via email:
`
`mlowrie@foley.com
`smaebius@foley.com
`lsilva@foley.com
`BOST-F-UMass513IPR@foley.com
`
`
`
`
`
`
`
`
`
`THE MARBURY LAW GROUP, PLLC
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Michelle E. O’Brien, Reg. No. 46,203/
`Michelle E. O’Brien, Reg. 46,203
`ATTORNEY FOR PETITIONER
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: October 9, 2018
`
`
`THE MARBURY LAW GROUP, PLLC
`11800 Sunrise Valley Drive
`15th Floor
`Reston, VA 20191
`Tel: 703-391-2900
`
`
`
`
`
`
`
`16
`
`