UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`EVERGREEN THERAGNOSTICS, INC.
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`Petitioner
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`– vs. –
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`ADVANCED ACCELERATOR APPLICATIONS SA
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`Patent Owner.
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`____________________
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`PGR2021-00001
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`U.S. Patent No. 10,596,278
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`____________________
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`EXPLANATION OF MULTIPLE PETITIONS
`CHALLENGING THE SAME PATENT IN ACCORDANCE
`WITH THE JULY 2019 UPDATED PATENT TRIAL GUIDE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`EVERGREEN THERAGNOSTICS, INC.
`
`Petitioner
`
`– vs. –
`
`ADVANCED ACCELERATOR APPLICATIONS SA
`
`
`Patent Owner.
`
`____________________
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`PGR2021-00001
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`U.S. Patent No. 10,596,278
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`____________________
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`EXPLANATION OF MULTIPLE PETITIONS
`CHALLENGING THE SAME PATENT IN ACCORDANCE
`WITH THE JULY 2019 UPDATED PATENT TRIAL GUIDE
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`Petitioner, Evergreen Theragnostics, Inc., respectfully submits this Paper in
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`support of its Petition for Post Grant Review of all claims (claims 1-25) of U.S.
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`Patent No. 10,596,278 (“the ’278 patent”). Petitioner has concurrently filed a
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`petition for Post Grant Review of claims 1-25 of the ’278 patent (PGR2021-00002)
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`relying on different prior art. Pursuant to the Patent Trial and Appeals Board’s Trial
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`Practice Guide Update released in July 2019, Petitioner provides this separate paper
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`to identify the difference between its two petitions and need to file separate petitions
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`regarding the ’278 patent. Petitioner requests that the Board use its discretion to
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`institute both petitions.
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`I.
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`RANKING OF PETITIONS
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`Petitioner requests that, if the Board uses its discretion to institute the
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`Petitions, the Board consider the merits of each petition beginning with this petition
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`(PGR2021-00001), followed by the petition for PGR2021-00002.
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`II. THE BOARD SHOULD EXERCISE
`INSTITUTE BOTH PETITIONS
`Petitioner has identified two (2) anticipatory references, i.e., (1) Strosberg
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`ITS DISCRETION TO
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`(Ex. 1011) and its accompanying Protocol (Ex. 1012); and (2) Maus (Ex. 1009).
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`Each Petition relies on one of the anticipatory references as the primary prior art
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`reference for the unpatentability analysis. This petition relies on Strosberg/Protocol
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`as the primary prior art reference and PGR2021-00002 relies on Maus as the primary
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`prior art reference.
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`2
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`Because unpatentability is based primarily on either of two anticipatory
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`references, and considering the word limitations for petitions, it is not possible to
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`thoroughly and completely address unpatentability using both Strosberg/Protocol
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`and Maus as primary references.
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`Moreover, Petitioner has used an expert witness
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`to establish
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`that
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`Strosberg/Protocol was published more than 1 year before the earliest filing date to
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`which the ’278 patent could claim priority. Therefore, Strosberg/Protocol is prior
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`art to the ’278 patent under 35 U.S.C. §102(a). The publication date of
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`Strosberg/Protocol (January 12, 2017), however, is relatively close to the date that
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`is one year before the ’278 priority date (July 25, 2018), and Petitioner does not
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`know if Patent Owner will dispute the prior art status of Strosberg/Protocol. If
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`Petitioner were to file a single petition for Post Grant Review relying on both (1)
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`Strosberg/Protocol as a primary art reference and (2) Maus as a primary art
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`reference, and Strosberg/Protocol was later determined to not be prior art, there
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`would be insufficient space in the petition to thoroughly and completely address
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`unpatentability on Maus, which is unquestionably prior art. For this reason, the
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`petitions do not use exactly the same art even with regard to obviousness
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`combinations. While the Strosberg petition (PGR2021-00001) uses Maus as a
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`secondary reference regarding some obviousness arguments, the Maus petition
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`(PGR2021-00002) does not rely on Strosberg/Protocol for unpatentability.
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`3
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`Additionally, filing a single petition, relying on both Strosberg/Protocol and
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`Maus as primary references is further complicated by the number of claims (25) in
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`the ’278 patent. The larger number of claims precludes being able to provide a
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`thorough and detailed analysis of why each claim is unpatentable based on both
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`Strosberg/Protocol as a primary prior art reference and then separately on Maus as a
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`primary prior art reference.
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`Finally, where there were issues that needed to be addressed only once (such
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`as the improper dependency of claim 24), that issue was included only in this petition
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`(PGR2021-00001).
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`The differences between the arguments in the two petitions is noted in tabular
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`format below:
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`PGR2021-00001
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`PGR2021-00002
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`Prior Art Grounds: Claims 1-5, 8-22
`and 24-25 are anticipated by (or would
`have been obvious) over
`Strosberg/Protocol; only obviousness is
`asserted against the other 3 claims
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`Prior Art Grounds: Claims 1, 8-17 and
`19 are anticipated by (or would have
`been obvious over) Maus; only
`obviousness is asserted against the
`other claims
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`Obviousness arguments over all claims
`based on Strosberg/Protocol including
`Maus as a secondary reference
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`Obviousness arguments on all claims
`with various art used as secondary
`reference; Strosberg/Protocol is not
`used as a reference
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`9 total grounds based on number of
`claims and additional dependent
`limitations
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`14 total grounds given the different
`primary reference and fewer claims
`asserted to be anticipated
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`Claim 24 also is invalid for improper
`dependency
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`Improper dependency argument is not
`included as duplicative of other petition
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`4
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`The enumerated Grounds rely on two different anticipatory references as
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`primary prior art references, necessitating different grounds using different art in the
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`two petitions. Furthermore, due to the large number of claims, Petitioner required
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`two petitions to adequately address why the claims of the ’278 patent are
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`unpatentable. Accordingly, the Board should exercise its discretion to institute both
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`this Petition and the Petition for PGR2021-00002).
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`Dated: October 2, 2020
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`/s/ C/ Kyle Musgrove
`C. Kyle Musgrove
`Registration No. 40,742
`Attorney for Evergreen Theragnostics, Inc.
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that service
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`was made on the Patent Owner as detailed below.
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`Date of service: October 2, 2020
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`Manner of service: FEDERAL EXPRESS
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`Documents served: Explanation of Multiple Petitions Challenging the Same
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`Patent in Accordance with the July 2019 Updated Patent Trial Guide
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`Persons served: Attorneys of record for U.S. Patent No. 10,596,278, as
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`follows:
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`Novartis Pharmaceutical Corporation
`Intellectual Property Department
`One Health Plaza 433/2
`East Hanover, NJ 07936
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`for Biomedical
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`Institutes
`Novartis
`Research, Inc.
`250 Massachusetts Avenue
`Cambridge, MA 02139
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`A courtesy copy of the foregoing was also sent by email to: Lian Ouyang,
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`Novartis Institutes for Biomedical Research, Inc. to: lian.ouyang@novartis.com.
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`/s/ C/ Kyle Musgrove
`C. Kyle Musgrove
`Registration No. 40,742
`Attorney for Evergreen Theragnostics, Inc.
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`6
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