Paper No. 13
`
`
`
`Trials@uspto.gov
` Filed: November 16, 2018
`
`
`571.272.7822
`
`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 IPR2018-00779
`Patent 6,645,513 B2
`____________
`
`
`
`Before CHRISTOPHER G. PAULRAJ, ROBERT A. POLLOCK, and
`DAVID COTTA, Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
` 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.
`6,645,513 B2 (Ex. 1002, “the ’513 patent”). Paper 2 (“Pet.”). The
`University of Massachusetts (“Patent Owner” or “UMass”) filed a
`Preliminary Response to the Petition. Paper 8 (“Prelim. Resp.”). On
`
`
`
`
`
`
`
`Trials@uspto.gov
` Filed: November 16, 2018
`
`
`571.272.7822
`
`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 IPR2018-00779
`Patent 6,645,513 B2
`____________
`
`
`
`Before CHRISTOPHER G. PAULRAJ, ROBERT A. POLLOCK, and
`DAVID COTTA, Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
` 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.
`6,645,513 B2 (Ex. 1002, “the ’513 patent”). Paper 2 (“Pet.”). The
`University of Massachusetts (“Patent Owner” or “UMass”) filed a
`Preliminary Response to the Petition. Paper 8 (“Prelim. Resp.”). On
`
`
`
`
`
`IPR2018-00779
`Patent 6,645,513 B2
`
`September 7, 2018, after consideration of the Petition and Preliminary
`Response, we entered a Decision denying institution of inter partes review
`Paper 10 (“Dec.”). On October 11, 2018, Petitioner filed a Corrected
`Request for Rehearing (Paper 12, “Req. Reh’g”) seeking reconsideration of
`the Decision.1
`For the reasons stated below, Petitioner’s Request for Rehearing is
`denied.
`
`II. ANALYSIS
`Standard of Review
`When reconsidering a decision on institution, we review the decision
`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion
`may be found 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. Star
`Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.
`Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d
`1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the
`burden of showing the decision should be modified, which includes
`specifically identifying all matters the party believes we misapprehended or
`overlooked. 37 C.F.R. § 42.71(d).
`
`
`
`
`
`1 Petitioner filed a Request for Rehearing on October 9, 2018. Paper 11.
`Because the request was incorrectly captioned, with the permission of the
`Board (Ex. 3002), Petitioner refiled a request for rehearing correcting this
`clerical error. Paper 12. All citations herein are to the Corrected Request
`for Rehearing.
`
`2
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`IPR2018-00779
`Patent 6,645,513 B2
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`
`Background
`Petitioner challenged claims 1–7 and 9 of the ’513 patent on three
`
`related grounds: that claims 1–7, and 9 are anticipated by JP ’1532; that
`claim 4 is obvious over JP ’153; and that claims 1–7 and 9 would have been
`obvious over the combination of JP ’153 and DE ’1073. Pet. 6–7. We
`declined to institute inter partes review. Dec.
`Petitioner’s Request for Rehearing focuses on our construction of the
`limitation in claim 1 requiring that “the adenosine concentration applied to
`the dermal cells is 10-3 M to 10-7 M.” In the Petition, Petitioner argued that
`this limitation should be construed to mean “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 10-3 M to 10-7 M
`(i.e., 0.0265 to 0.00000265 wt %).” Pet. 15. In the Decision denying
`institution, we rejected Petitioner’s proposed construction and construed this
`limitation to mean “mean what it says – that the recited concentration is the
`concentration that is applied to the dermal cells.” Dec. 14.
`Legal Principles
`For the reasons discussed in connection with our institution decision,
`
`we applied a district court-type claim construction like that provided in
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Dec. 6.
`
`
`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.
`3 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.
`
`3
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`IPR2018-00779
`Patent 6,645,513 B2
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`Under this standard, we gave 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 considered the extrinsic evidence presented by Petitioner. Id.
`at 1317. Petitioner does not challenge our decision to apply the Phillips
`claim construction standard. Req. Reh’g 2.
`Analysis
`Claim 1 of the ’513 patent, the only independent claim, requires
`“topically applying to the skin a composition comprising a concentration of
`adenosine.” In the Decision, we construed this limitation to require that “a
`composition be applied directly to the outer, epidermal layer of the skin that
`is intact . . . such that the inner, dermal layer of the skin is not exposed.”
`Dec. 6–7. Petitioner agrees that this is the correct construction. Req. Reh’g
`4.
`
`Claim 1 also requires that “the adenosine concentration applied to the
`dermal cells is 10-3 M to 10-7 M.” In the Decision, we construed this
`limitation to require that the recited concentration is “the concentration that
`is applied to the dermal cells.” Dec. 14.
`Petitioner argues that we “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.” Req.
`Reh’g 2. We are not persuaded.
`Any construction of the phrase “concentration applied to the dermal
`cells” must ascribe some meaning to the term “dermal cells.” As discussed
`
`4
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`IPR2018-00779
`Patent 6,645,513 B2
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`in the Decision, there is no dispute that the skin is comprised of multiple
`layers, including the epidermis, the dermis, and subcutaneous fat. Dec. 8.
`Our construction gives the term “dermal cells” is ordinary meaning by
`construing it to refer to “dermal cells” — i.e., the dermis or dermal layer.
`We do not find in the record, and Petitioner does not suggest, another way to
`interpret the limitation “concentration applied to the dermal cells” consistent
`with the ordinary meaning of the words “dermal cells.”
`Petitioner proposes that we construe the limitation “concentration
`applied to the dermal cells” to mean “a concentration . . . applied to an
`unbroken, epidermal layer of a region of the skin containing the dermal
`cells.” Pet. 15. However, as noted in the Decision, there is no 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. Dec. 8 n.3. Petitioner’s proposed construction is, thus, contrary
`to the language of the claim, because it changes the meaning of “dermal
`cells” to “epidermal cells.”
`Petitioner argues, in effect, that the ordinary meaning of the term
`“dermal cells” changes when it is considered “within the context of the
`immediately-preceding words ‘applied to,’ and the single recited
`application step.” Req. Reh’g 3. According to Petitioner, there is only one
`step in claim 1 in which adenosine is “applied” and that step requires
`application to the skin (which we interpreted to mean the epidermal layer of
`the skin). Petitioner contends the claim term “applied” in the limitation
`“applied to the dermal cells” must be understood to refer back to this step of
`applying adenosine to the epidermal layer of the skin because, otherwise,
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`5
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`IPR2018-00779
`Patent 6,645,513 B2
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`“the language ‘the adenosine concentration applied’ would lack antecedent
`basis.” Id. at 4. We are not persuaded.
`As discussed in the Decision, the Specification discloses not only that
`adenosine may be topically applied to the epidermal layer of the skin, but
`also that adenosine so applied will penetrate the epidermis to reach the
`dermal layer. Dec. 9 (citing Ex. 1002, 5:20–23 (“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.”)). Topical application
`of adenosine will, therefore, result in adenosine being brought into contact
`with both the epidermis and the dermis. As also discussed in the Decision,
`the specification provides examples in which a concentration of adenosine
`within the range recited in the claims (10-4 M) is applied directly to dermal
`cells (fibroblasts), suggesting that the inventors considered it desirable for
`the dermal cells to receive the claimed concentration of adenosine. Id. In
`this context, the meaning of claim 1 is clear: adenosine is first topically
`applied to the epidermal layer of the skin and, only after it penetrates this
`outer skin layer, is a specific concentration (10-4 M to 10-7 M) of the
`adenosine “applied” to the dermal cells.
`Petitioner argues that our construction is incorrect because it
`“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.” Req. Reh’g 12. Petitioner asserts that “[s]uch an interpretation
`improperly alters the meaning of ‘topically applying’ and ‘applied.’” Id.
`This argument, however, fails to account for the context provided by
`the Specification which, as discussed above, teaches that adenosine will
`penetrate the skin. Particularly when considered in this context, we do not
`
`6
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`IPR2018-00779
`Patent 6,645,513 B2
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`read the term “applied” so narrowly as to exclude an application which
`reaches its target destination (here the “dermal cells”) by passing through a
`layer that overlies the target destination (here the epidermis). This is
`consistent with the ordinary meaning of “apply” — i.e., “to bring into
`physical contact with or close proximity to.” Ex. 3003 (definition 9 from
`dictionary.com (last accessed Oct. 26, 2018), see also, definition 8). Here,
`adenosine is brought into physical contact with the dermal cells. Nothing in
`the language of the claims, as interpreted in light of the intrinsic and
`extrinsic evidence, requires that adenosine be applied directly to the dermal
`cells.
`Petitioner argues that we erred in failing to find a prosecution
`disclaimer. Req. Reh’g 5–10. More particularly, Petitioner argues that our
`acknowledgement that 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
`the dermal cells’” requires that we find a prosecution disclaimer. Id. at 6
`(internal citation omitted). We are not persuaded.
`A prosecution history disclaimer must be clear and unambiguous.
`“[W]hile the prosecution history can inform whether the inventor limited the
`claim scope in the course of prosecution, it often produces ambiguities
`created by ongoing negotiations between the inventor and the PTO.
`Therefore, the doctrine of prosecution disclaimer only applies to
`unambiguous disavowals.” Grober v. Mako Prods., Inc., 686 F.3d 1335,
`1341 (Fed. Cir. 2012) (citing Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282,
`1289 (Fed. Cir. 2009)). A “heavy presumption” exists in favor of the
`ordinary meaning of claim language. Bell Atl. Network Servs., Inc. v. Covad
`
`7
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`IPR2018-00779
`Patent 6,645,513 B2
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`Commc’ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). To overcome
`this presumption, the patentee must “clearly set forth” and “clearly redefine”
`a claim term away from its ordinary meaning. Id. The disavowal must be
`“unmistakable” and “unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d
`1315, 1322 (Fed. Cir. 2013). This standard is “exacting.” Thorner v. Sony
`Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012).
` Here, during prosecution of the parent of the ‘513 patent, Patent
`Owner stated that the low end of the range recited in DE ’107 (0.001% wt)
`“corresponds to 3.8 x 10-5 adenosine” which is “between the 10-4 M and 10-5
`M concentration recited in the claims.”4 Ex. 1009, 84. Patent Owner did not
`use this statement to distinguish the claimed adenosine concentration from a
`concentration disclosed in the prior art. Rather, Patent Owner used it to
`support the argument that the “extremely broad range of adenosine
`concentrations listed in . . . [DE ’107] is not supported by reality.” Id. More
`specifically, Patent Owner argued that, although DE ’107 disclosed a
`concentration of adenosine within the recited range, in contrast to the
`challenged claims, DE ’107 taught (incorrectly accordingly to the Patent
`Owner) that this level of adenosine increases cell proliferation. Id.
`As recognized in our Decision (Dec. 11), although Patent Owner’s
`comparison of the claimed concentration to a prior art concentration
`provides some support for Petitioner’s proposed construction, it does not
`“clearly redefine” the phrase “applied to the dermal cells” or alter the scope
`of the claims such that the recited concentration of adenosine need not reach
`
`
`4 In our Decision, we cited this statement as an example of Patent Owner
`comparing the concentration of adenosine 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.” Dec. 11.
`
`8
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`IPR2018-00779
`Patent 6,645,513 B2
`
`the dermal cells. Nor does it disclaim subject matter found in the prior art
`or, otherwise, “unmistakably” disavow application of the recited
`concentration to the dermal cells.
`This is particularly true when the statement is considered in the
`context of the prosecution history as a whole. Ecolab, Inc., v. FMC Corp.,
`569 F.3d 1335, 1342 (Fed. Cir. 2009) (“Even if an isolated statement
`appears to disclaim subject matter, the prosecution history as a whole may
`demonstrate that the patentee committed no clear and unmistakable
`disclaimer.”). Specifically, in arguing that the amount of adenosine recited
`in DE ’107 does not increase cell proliferation, Patent Owner submitted
`results from tests in which adenosine was applied directly to dermal cells
`(fibroblasts) at concentrations of 10-4 M and 10-5 M. Ex. 1009, 84, 89–90.
`This suggests that the inventors contemplated dermal cells receiving the
`recited concentration of adenosine. Patent Owner also relied on these test
`results as the basis for the statement that “the presently claimed invention is
`based on the demonstration that the recited concentrations of adenosine do
`not increase cell proliferation.” Id. at 84. Again, this suggests that “the
`recited concentrations of adenosine” — i.e., the concentrations recited in the
`claim — are those applied to the dermal cells.
`In addition, as noted in the Decision, Patent Owner expressly
`corrected the Examiner when the Examiner stated in the reasons for
`allowance of the parent patent application 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). This suggests that the
`
`9
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`IPR2018-00779
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`
`Patent Owner did not intend for the concentration recited in the claims to be
`the concentration applied to the skin.
`In sum, while the prosecution history does include a passage that is
`arguably consistent with Petitioner’s proposed construction, it does not
`include an “unmistakable” and “unambiguous” disavowal, and does not
`“clearly set forth” and “clearly redefine” the phrase “applied to the dermal
`cells.”
`Petitioner argues that our claim construction is erroneous because it
`“lacks both enablement and written description support.” Req. Reh’g 13.
`We are not persuaded for the reasons discussed at length in the Decision.
`Dec. 12–14.
`Petitioner argues that we misapplied Chef America, Inc. v. Lamb-
`Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004), “by not affording proper
`weight to the context of the claim, specification, and file history.” Req.
`Reh’g 14. More particularly, Petitioner asserts that, in contrast to our
`Decision, which Petitioner asserts “merely dismiss[es] construction of the
`challenged claim term as ‘unambiguous,’ the court 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 [at issue] in view of the prosecution.”
`Id. at 14–15. We are not persuaded because, as explained in the Decision,
`our construction is also supported by the claim language, the specification,
`and the prosecution history. Dec. 7–14.
`Accordingly, Petitioner has not persuaded us that we have
`misapprehended or overlooked any matters with respect to our decision to
`deny institution. 37 C.F.R. § 42.71(d).
`
`10
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`IPR2018-00779
`Patent 6,645,513 B2
`
`
`III. CONCLUSION
`For the foregoing reasons, we conclude that Petitioner has not shown
`that the Board abused its discretion in denying institution of the challenged
`claims. See 37 C.F.R. § 42.71(d).
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`PETITIONER:
`
`Michelle E. O’Brien
`Timothy J. Murphy
`Joanna Cohn
`THE MARBURY LAW GROUP, PLLC
`mobrien@marburylaw.com
`tjmurphy@marburylaw.com
`jcohn@marburylaw.com
`
`
`PATENT OWNER:
`
`Matthew B. Lowrie
`Stephen B. Maebius
`Lucas Silva
`FOLEY & LARDNER LLP
`mlowrie@foley.com
`smaebius@foley.com
`lsilva@foley.com
`
`11
`
`
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