UNITED STATES PATENT AND TRADEMARK OFFICE
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` ________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ________________
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`L’ORÉAL USA, INC.,
`
`Petitioner,
`
`v.
`
`LIQWD, INC.,
`
`Patent Owner.
`
` ________________
`
`Case IPR2018-00779
`
`Patent No. 6,645,513 B1
`
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450 Alexandria, VA 22313-1450
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`
`
`
`
`
`
`
` ________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ________________
`
`L’ORÉAL USA, INC.,
`
`Petitioner,
`
`v.
`
`LIQWD, INC.,
`
`Patent Owner.
`
` ________________
`
`Case IPR2018-00779
`
`Patent No. 6,645,513 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
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`I. REQUEST FOR RELIEF .................................................................................... 1
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`II. ARGUMENT ....................................................................................................... 1
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`A. The Board’s interpretation amounts to an erroneous application of the
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`law and is unreasonable in view of relevant factors .......................................... 1
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`1. The Decision misapplies Phillips in construing “dermal cells” .................... 2
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`a. The Decision overlooked the remaining language of the claim.................... 3
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`b. The Decision improperly found no prosecution disclaimer .......................... 5
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`i. The Board acknowledged PO’s characterization of the claims, but
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`improperly focused only on “dermal cells” ......................................................... 6
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`ii. PO’s statements after prosecution was closed were insufficient to rescind
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`disclaimer of subject matter made to obtain allowance ...................................... 8
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`c. The Decision misapprehends the specification ...........................................10
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`2. The Board misconstrued Petitioner’s proposed interpretation ....................10
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`B. The Board’s interpretation rewrites the claim as PO intended................12
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`C. The Board’s interpretation is erroneous as it fails under 35 U.S.C. §112
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`
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`13
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`D. The Decision misapplies Chef America, which is distinguishable ............14
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`III. CONCLUSION ..................................................................................................15
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`
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`
`
`i
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`
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`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
`
`Elkay Mfg. Co. v. Ebco Mfg. Co., ............................................................................. 5
`192 F.3d 973, 980 (Fed.Cir.1999)
`
`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
`
`
`
`ii
`
`
`
`Uship Intellectual Props., LLC v. United States,
`
`714 F.3d 1311 (Fed. Cir. 2013) ....................................................................... 5
`
`
`
`Statutes
`
`35 U.S.C. § 112 ................................................................................................. 13, 14
`
`
`
`Rules
`
`37 C.F.R. § 1.104(e) .................................................................................................. 9
`37 C.F.R. § 1.114(b) .................................................................................................. 9
`37 C.F.R. § 42.71(c) ................................................................................................... 1
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`
`
`
`
`iii
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`
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`I. REQUEST FOR RELIEF
`
`
`
`In response to the Decision Denying Institution of IPR2018-000779
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`(“Decision,” Paper 10) finding that claims 1-7 and 9 of U.S. Patent No. 6,645,513
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`(“the ‘513 patent”) are not unpatentable as set forth in Grounds 1-3 of the Petition
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`for Inter Partes Review (“Petition,” Paper 2), Petitioner respectfully requests
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`rehearing under 37 C.F.R. § 42.71(d) of Grounds 1-3.
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`II. ARGUMENT
`
`A party may request rehearing of a decision by the Board whether to
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`institute a trial, which the Board will review for an abuse of discretion. 37 C.F.R.
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`§42.71(c). “An abuse of discretion may be indicated if a decision is based on an
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`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
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`misapplied the standard for claim construction, erred in finding that prosecution
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`disclaimer did not apply, and overlooked evidence of record in interpreting the
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`language “applied to the dermal cells,” which interpretation the Board relied on to
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`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
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`
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`The Board correctly cited Phillips as requiring claim terms be given “their
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`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
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`evidence submitted with the Petition. (Paper 10 at 6 (citing Phillips v. AWH Corp.,
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`415 F.3d 1303, 1313, 1317 (Fed. Cir. 2005) (en banc).) However, led to error by
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`PO, the Board’s claim interpretation is clearly erroneous as it (1) incorrectly
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`applied Phillips by interpreting only two words of the claim, i.e. “dermal cells,” in
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`isolation, overlooking the remaining language of the claims and therefore failing to
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`accord sufficient weight to the specification and file history or Petitioner’s
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`evidence, and (2) misapprehended Petitioner’s proposed construction.
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`1. The Decision misapplies Phillips in construing “dermal cells”
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`Phillips confirmed that the “ordinary and customary” meaning “is the
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`meaning that the term would have to a person of ordinary skill in the art in
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`question at the time of the invention, i.e., as of the effective filing date of the patent
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`application.” Phillips, 415 F.3d at 1313. However, Phillips also confirmed that, in
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`order to arrive at the “ordinary and customary” meaning, the skilled artisan is
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`deemed to read the language not in isolation but in the context of the entire patent,
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`including the remainder of the claim language, the specification, and the
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`prosecution history. Id. In other words, Phillips requires that the “ordinary and
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`
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`2
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`
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`customary” meaning of the disputed language is determined by considering the
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`remaining language of the claim, the specification, the prosecution history, and any
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`pertinent extrinsic evidence. In the current proceeding, however, the Board was
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`erroneously led to misapply Phillips by starting with the “plain and unambiguous”
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`meaning of only two words, i.e., “dermal cells,” in isolation, resulting in a legally
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`erroneous claim interpretation. (Paper 8 at 12; Paper 10 at 8.)
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`a. The Decision overlooked the remaining language of the claim
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`The Decision is improper as it misapplied Phillips by failing to interpret the
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`term “dermal cells” within the context of the immediately-preceding words
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`“applied to,” and the single recited application step. Cf. Phillips, 415 F.3d at 1314
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`(“the claims themselves provide substantial guidance as to the meaning of
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`particular claim terms”); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088
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`(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”),
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`quoted in Phillips, 415 F.3d at 1314. Contrary to PO’s argument, which the Board
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`accepted, when the phrase “dermal cells” is read in context with “applied to,” and
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`the context of the only recited step of “topically applying to the skin,” the claim
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`language is not “plain and unambiguous.” (Paper 8 at 12; Paper 10 at 11.)
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`Indeed, the Board appears to have overlooked that claim 1 of the ‘513 patent
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`recites only a single application step (“the method comprising topically applying
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`
`
`3
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`
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`to the skin a composition comprising a concentration of adenosine…”),
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`subsequently reciting that a concentration of adenosine is “applied to the dermal
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`cells.” (Paper 2 at 20.) Instead, the Board erroneously interpreted claim 1 to
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`include two separate “applications,” one to the skin and one to the dermal cells.
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`(Paper 10 at 9: “if [PO] had intended both ‘applications’ recited in the claim 1 to
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`be made to the same cells, [PO] would have used the same term to describe both
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`applications” (emphasis added).) This was erroneous.
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`In the phrase “applied to the dermal cells,” the term “applied” clearly refers
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`to the previous step of “topically applying to the skin a composition comprising a
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`concentration of adenosine,” when read in context with the remainder of the
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`claim. (Paper 2 at 20.) To be sure, the language “the adenosine concentration
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`applied” would lack antecedent basis otherwise. Thus, the Board overlooked that
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`the term “applied to the dermal cells” refers to the previously-recited, topical
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`application step. As such, because there is only one application step in the claim,
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`the Board erred in interpreting the term “applied to dermal cells” in isolation from
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`the rest of the claim language, i.e. as a separate application step. (Paper 10 at 9.)
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`Indeed, the Board correctly found that the term “topically applying to the
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`skin” means topical application to the “epidermal layer of the skin that is
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`intact…such that the dermal layer of the skin is not exposed.” (Id. at 7-8.)
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`However, as explained in the Petition, this correct interpretation of “topically
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`4
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`
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`applying to the skin” renders the Board’s interpretation of “applied to the dermal
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`cells” ambiguous. (Paper 2 at 26.) In particular, because the Decision correctly
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`found that the skin is intact, the “dermal cells” are not accessible for application.
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`(Paper 10 at 7.) Thus, because there is only one application step recited in the
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`claim, i.e. a topical application step to the unbroken, outer layer of the skin “such
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`that the dermal layer of the skin is not exposed,” it is unclear how a concentration
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`of adenosine could be “applied to the dermal cells” in this single step, which
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`renders the Board’s interpretation ambiguous, and therefore clearly erroneous.
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`b. The Decision improperly found no prosecution disclaimer
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`It is well accepted that an applicant's statements to the PTO characterizing
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`its invention may give rise to prosecution disclaimer. Uship Intellectual Props.,
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`LLC v. United States, 714 F.3d 1311, 1315 (Fed. Cir. 2013). Prosecution
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`disclaimer can arise from both claim amendments and arguments. Biogen Idec,
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`Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013). Importantly,
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`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
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`Props. Ltd. v. Huawei Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017). Finally,
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`“the prosecution history regarding a claim limitation in any patent that has issued
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`applies with equal force to subsequently issued patents that contain the same claim
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`limitation.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed.Cir.1999).
`
`
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`5
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`
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`i. The Board acknowledged PO’s characterization of the claims, but
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`improperly focused only on “dermal cells”
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`In the Decision, the Board acknowledged that during prosecution of the
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`parent application, PO “compared prior art concentrations of adenosine that were
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`recited as a percentage of the total weight of the composition to the concentration
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`recited in the claims as being ‘applied to the dermal cells.’” (Paper 10 at 10-11
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`(emphasis added).) In other words, the Board apparently agreed with Petitioner
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`that, in order to secure allowance of the parent ‘327 patent, PO itself interpreted
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`the language “the amount of adenosine applied to the dermal cells” as the
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`“concentration of adenosine in the composition that is applied to the unbroken”
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`skin. (Paper 2 at 23-24; Paper 10 at 11 (agreeing “[PO] stated that the low end of
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`the range recited in [the composition of] DE’107 (0.001%wt) ‘corresponds to [a]
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`concentration recited in the claims’”).)
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`However, the Board did not find PO’s clear and unmistakable position
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`during its attempt to secure allowance of the parent claims “sufficient to overcome
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`the plain and unambiguous language of the claims,” or to be “an attempt to
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`redefine the term ‘dermal cells’ or to disavow claim scope.” (Paper 10 at 12,
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`relying on Phillips for the proposition “that it would be ‘unjust to the public, as
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`well as an evasion of the law, to construe [a claim] in a manner different from the
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`plain import of its terms.’”) This was an erroneous interpretation of law, however,
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`
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`6
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`
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`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
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`not entitled to an interpretation that would alter the indisputable public record
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`consisting of the claims, the specification and the prosecution history, and treat the
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`claims as a "nose of wax." Senmed, Inc. v. Richard-Allan Med. Indus., Inc., 888
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`F.2d 815, 819 n.8 (Fed. Cir. 1989),overruled in part on other grounds by Cardinal
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`Chem. Co. v. Morton Int'l, 508 U.S. 83 (1993).
`
`As discussed above and in the Petition, it was an erroneous application of
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`Phillips to focus on the language of only two words, i.e. “dermal cells,” without
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`considering the full context of the remaining language of the claim, when the
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`Board considered whether PO’s clear and unmistakable characterization of the
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`language of the parent claims was, in fact, a prosecution disclaimer. (Supra,
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`§II(A)(1)(a); Paper 2 at 23-25.) As explained in the Petition, PO added the
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`limitation reciting a concentration of adenosine “applied to the dermal cells,” and
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`subsequently argued that the claimed concentration was distinguishable from the
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`concentration in the compositions of DE’107 and Hartzshtark. (Paper 2 at 24-25,
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`citing Ex. 1009, at 83-87; see also Ex. 1009, at 90.) The amendment and
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`statements made by PO to overcome the references and obtain allowance of the
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`
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`7
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`
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`claims indeed constitutes disclaimer of any interpretation of a concentration of
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`adenosine “applied to the dermal cells” other than the concentration in the
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`composition topically applied to unbroken skin, as it is well accepted that claims
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`may not be construed one way in order to obtain their allowance and in a different
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`and inconsistent way in a subsequent proceeding. Unique Concepts, Inc. v. Brown,
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`939 F.2d 1558, 1562 (Fed. Cir. 1991).
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`Notably, PO did not distinguish the prior art by relying on the concentration
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`that reaches the dermal cells. That PO may have disclaimed more than was
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`necessary to distinguish from the prior art is inapposite, as “the scope of surrender
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`is not limited to what is absolutely necessary to avoid a prior art reference;
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`patentees may surrender more than necessary.” Technology Props., 849 F.3d at
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`1359. “The question is what a person of ordinary skill would understand the
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`patentee to have disclaimed during prosecution, not what a person of ordinary skill
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`would think the patentee needed to disclaim during prosecution.” Id. Dr. Wickett
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`testified, and PO did not provide any evidence to the contrary, that a skilled artisan
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`would have understood that the concentration of adenosine “applied to the dermal
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`cells” meant the concentration in the composition based on PO’s remarks during
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`the prosecution of the parent application. (Paper 2 at 25, citing Ex. 1010 at ¶33.)
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`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
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`
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`8
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`
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`the Examiner’s reasons for allowance that the concentration is applied to the
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`dermal cells, the Board erroneously gave this statement more weight than was
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`appropriate, as this bare statement did not inform the Examiner or the public how
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`the “correction” applied to the arguments made to overcome the prior art. (Paper
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`10 at 12.) See Hakim v. Cannon Avent Group, PLC, 479 F.3d 1313, 1318 (Fed.
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`Cir. 2007) (“Although a disclaimer made during prosecution can be rescinded,
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`permitting recapture of the disclaimed scope, the prosecution history must be
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`sufficiently clear to inform the examiner that the previous disclaimer, and the prior
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`art that it was made to avoid, may need to be re-visited” (emphasis added)).
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`Furthermore, the Examiner’s Notice of Allowance acted to close prosecution
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`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
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`closed was not sufficient to revoke its prior disclaimer of subject matter made
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`during prosecution and in order to secure allowance, for this additional reason.
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`Finally, PO was still arguing that “applied to the dermal cells” was properly
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`understood as regards the concentrations of active agent in the cited prior art
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`compositions in prosecution of continuation applications “in 2005 (years after the
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`patent issued).” (Ex. 3001.1) Thus, despite its legally insufficient “correction,”
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`
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`1 Petitioner was denied a chance to respond to PO’s improper argument in the
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`August 28, 2018, email. However, PO’s admissions therein are properly cited in
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`
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`9
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`
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`PO was continuing to put the public on notice many years after issuance of the
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`‘327 patent that the concentration “applied to the dermal cells” should be
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`interpreted as the concentration in the compositions topically applied to the skin.
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`c. The Decision misapprehends the specification
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`The Board stated that the phrase “dermal cells” was unambiguous, and that
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`“nothing in the Specification or prosecution history suggests that [PO] defined
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`‘dermal cells’ to mean anything other than ‘dermal cells.’” (Paper 10 at 14.)
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`However, as discussed above, it was an erroneous application of Phillips for the
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`Board to focus on the language of only two words, “dermal cells,” without
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`considering the full context of the remaining language of the claim, when the
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`Board evaluated the specification for proper claim interpretation. (Supra,
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`§II(A)(1)(a).) Indeed, direct topical application of a concentration of adenosine
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`“applied to the dermal cells” is not described in the specification at all, and thus
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`cannot support the Board’s interpretation. (Paper 2 at 32.)
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`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
`
`is intact’… and ‘epidermal layer of a region of the skin containing the dermal
`
`
`
`this Paper, as they are a part of the record prior to the Institution Decision.
`
`
`
`10
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`
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`cells.’”2 (Paper 10 at 9 (emphasis added).) However, when read in the context of
`
`the full claim, the specification, and file history, the difference is clear.
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`Petitioner’s proposed construction of “topically applied to the unbroken,
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`outer epidermal layer of a region of the skin containing the dermal cells” conveys
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`that the concentration of adenosine is that in the composition topically applied to
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`an unspecified region of the skin containing the dermal cells. (Paper 2 at 21, citing
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`Ex. 1002, 1:61-65, 2:1-5, 2:9-13.) This interpretation is supported by the
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`specification, e.g.:
`
`The method includes topically administering a composition
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`including a therapeutically effective amount of adenosine to
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`a region of skin of the mammal containing the dermal cell,
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`wherein addition of
`
`the adenosine does not cause
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`proliferation of the dermal cell…
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`(Paper 2 at 21, citing inter alia, col. 2, lines 9-13). In addition, as discussed in
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`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
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`claim. (Supra, §II(A)(1)(a); Paper 2 at 23-25, citing Ex. 1009, 83-87). In view of
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`PO’s clear and unmistakable characterizations in the prosecution of the ‘327
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`patent, the public was on notice that a determination of the concentration “applied
`
`
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`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.”
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`
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`11
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`
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`to the dermal cells” was correctly made by determining the concentration in the
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`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
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`impossibility of determining a concentration that “penetrates to” or “reaches” the
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`dermal cells through the epidermal layer. (Id.; see also §II.C, infra.)
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`B. The Board’s interpretation rewrites the claim as PO intended
`
`Although not expressly stated, the Board implicitly concludes that “applied
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`to the dermal cells” means “reached” or “received by” the dermal cells, or
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`“penetrates through” the skin to reach the dermal cells. (Paper 10 at 9-10.) Such
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`an interpretation improperly alters the meaning of “topically applying” and
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`“applied,” rewriting the claim as PO intended it to read, which is erroneous. See
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`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 10 at 9 (emphasis
`
`added)) cannot be relied on to change the meaning of the term “applied,” because
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`unless clearly articulated by the patentee, the same term in a claim must have the
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`same meaning. See id.; Phillips, 415 F.3d at 1314. Rather, for the Board’s
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`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
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`
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`“applying” in “topically applying to the skin.” Phillips, 415 F.3d at 1314. For the
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`same reason, the term “applied” cannot be changed to mean “received” or
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`“reached.” Accordingly, the Board’s interpretation is erroneous.
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`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.
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`Dr. Wickett testified there was no known way of determining the amount of
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`adenosine that would be received by, or reach, a dermal cell in 1998, due to the
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`numerous factors that require consideration and would change any result. (Paper 2
`
`at 27, citing Ex. 1011, at 34-35.4) And, as noted in the Petition, the ‘513 patent
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`discloses no such method. (Id. at 38.) In addition, as Dr. Mustafa testified, the
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`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
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`dermal layer. (Id.) Although the Board found Drs. Wickett and Mustafa to be
`
`qualified experts and recognized their testimony (see Paper 10 at 5, 12), it
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`
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`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
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`that reaches the dermal cell, the Board misapprehended the teaching therein as
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`there is no such disclosure in Ex. 2002, which discloses a method for evaluating
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`the effect of a composition, not the concentration that reaches a dermal cell.
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`erroneously did not give either Declaration weight, contrary to the decision in
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`Phillips. See 415 F.3d at 1318.
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`Finally, the Board’s reliance on ex vivo testing in an attempt to establish that
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`“the inventors contemplated dermal cells receiving the recited concentration of
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`adenosine” is contradicted by the inventors’ declaration submitted during
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`prosecution equating the concentration applied ex vivo to the amount in the
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`composition of DE‘107, i.e., applied to the skin. (See, Paper 2 at 59, citing Ex.
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`1009, at 83-84, 89-92). Thus, the ex vivo testing does not provide written
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`description or enablement support for the Board’s interpretation. To the contrary,
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`the inventors contemplated in their declaration that there was no difference
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`between the concentration “applied to dermal cells” and topical application. (Id.)
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`Accordingly, the Board’s implicit interpretation of “applied” to mean “reached” or
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`“received” would render the claims invalid under 35 U.S.C. §112 for lack of
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`enablement and written description support, and is legally erroneous for this
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`additional reason. See Modine Mfg. Co. v. United States I.T.C., 75 F.3d 1545,
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`1557 (Fed. Cir. 1996) (if claims “are amenable to more than one construction, they
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`should when reasonably possible be interpreted so as to preserve their validity”).
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`D. The Decision misapplies Chef America, which is distinguishable
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`The Decision misapplies Chef America by not affording proper weight to the
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`context of the claim, specification, and file history. In particular, rather than merely
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`dismissing construction of the challenged claim term as “unambiguous,” the court
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`in Chef America properly conducted a thorough analysis of the claim language,
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`specification, and file history to determine that the specification supported, and
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`patentee there intended for, the meaning of the term “heating … dough to a
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`temperature in the range of about 400°F” to mean “to,” in view of the prosecution.
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`Chef America, 358 F.3d at 1373 (emphasis added). In contrast, however, direct
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`topical application of the recited concentration of adenosine “applied to the dermal
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`cells” is not supported in the ‘513 patent. (Paper 2 at 20-22; §II(A)(1)(c), supra.)
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`Likewise, here PO added the limitation “applied to the dermal cells” and argued
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`during prosecution that prior art compositions did not meet the limitation, but
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`failed to argue or suggest that the adenosine in the prior art compositions would
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`not “reach the dermal cells” in the recited concentrations. (Paper 2 at 23-25;
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`§II(A)(1)(b)(i), supra.) Thus, Chef America is distinguishable and does not
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`support the Board’s interpretation.
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`III. CONCLUSION
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`For the reasons set forth above, Petitioner respectfully requests rehearing of
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`Grounds 1-3 of the Petition for Inter Partes Review.
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`Date: October 9, 2018
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`Respectfully submitted,
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`/Michelle E. O’Brien, Reg. No. 46,203/
`Michelle E. O’Brien, Reg. 46,203
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`Timothy J. Murphy, Reg. No. 62,585
`ATTORNEYS FOR PETITIONER
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`CERTIFICATION OF SERVICE 37 C.F.R. § 42.6(e)
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`The undersigned hereby certifies that the above-captioned REQUEST FOR
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`REHEARING UNDER 37 C.F.R. § 42.71(d) was served in its entirety on
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`October 9, 2018, on the following parties via email:
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`mlowrie@foley.com
`smaebius@foley.com
`lsilva@foley.com
`BOST-F-UMass513IPR@foley.com
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`THE MARBURY LAW GROUP, PLLC
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`/Michelle E. O’Brien, Reg. No. 46,203/
`Michelle E. O’Brien, Reg. 46,203
`ATTORNEY FOR PETITIONER
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`Date: October 9, 2018
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`THE MARBURY LAW GROUP, PLLC
`11800 Sunrise Valley Drive
`15th Floor
`Reston, VA 20191
`Tel: 703-391-2900
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