Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: June 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SANOFI-AVENTIS U.S. LLC and
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Petitioners,
`
`Vv.
`
`ASTRAZENECA PHARMACEUTICALSLPand
`AMYLIN PHARMACEUTICALS, LLC,
`Patent Owners.
`
`Case IPR2016-00355
`Patent 8,951,962 B2
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG,and
`TINA E. HULSE,Administrative Patent Judges.
`
`SNEDDEN,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Tel: 571-272-7822
`
`Paper 7
`Entered: June 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SANOFI-AVENTIS U.S. LLC and
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Petitioners,
`
`Vv.
`
`ASTRAZENECA PHARMACEUTICALSLPand
`AMYLIN PHARMACEUTICALS, LLC,
`Patent Owners.
`
`Case IPR2016-00355
`Patent 8,951,962 B2
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG,and
`TINA E. HULSE,Administrative Patent Judges.
`
`SNEDDEN,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2016-00355
`Patent 8,951,962 B2
`
`I.
`
`INTRODUCTION
`
`Sanofi-Aventis U.S. LLC and Sanofi-Aventis Deutschland GMBH
`
`(collectively, “Petitioner” filed a Petition (Paper 3; “Pet.”) to institute an
`interpartes review ofclaims 1-3 and 7-9 ofUS 8,951,962 B2 (Ex. 1001;
`“the ’962 patent”). AstraZeneca Pharmaceuticals LP and Amylin
`Pharmaceuticals, LLC (collectively, “Patent Owner’’) did not file a Patent
`
`OwnerPreliminary Response. Weapply the threshold for review under 35
`
`U.S.C. § 314.
`Uponconsideration of the above-mentioned Petition, we concludethat
`Petitioner has established that there is a reasonable likelihood thatit will
`
`prevail with respect to at least one of the challenged claims. Weinstitute an
`inter partes review as to claims 1-3 and 7-9 ofthe ’962 patent.
`
`A. Related Proceedings
`Patent Owneridentifies the following co-pending case involving the
`°962 patent: Sanofi-Aventis U.S. LLC, etal. v. AstraZeneca Pharmaceuticals
`LP, et al., Civil Action No. 15-cv-00662-GMS(D.Del.). Paper 6.
`Concurrent with the present inter partes review,Petitioner also
`requested review ofclaimsin related patents, including: U.S. Patent No.
`7,297,761 (Case IPR2016-00348); U.S. Patent No. 7,691,963 (Case
`IPR2016-00353); and U.S. Patent No. 8,445,647 (Case IPR2016-00354).
`
`B. The ’962 patent (Ex. 1001)
`The ’962 patent discloses “modified exendins and exendin agonists
`having an exendin or exendin agonist linked to one or more molecular
`weight increasing compounds, of which polyethylene glycol polymers (or
`other molecular weight increasing agents), and related products and
`
`2
`
`
`
`IPR2016-00355
`-Patent 8,951,962 B2
`
`/
`
`r&
`
`_ methods.” Ex. 1001, 4:9-15. The "962 patent discloses exendin-4 asa
`peptide that has the sequenceset forth in SEQ.ID NO: 2. Id. at 1:57-58,
`31:1-21, Figure 2. The “molecular weight increasing compounds”are
`described as follows:
`’
`
`'
`
`A “molecular weight increasing compound”is one that can be
`conjugated to an exendin or exendin agonist and thereby increase
`the molecular weight of the resulting conjugate. Representative
`examplesofmolecular weight increasing compounds, in addition
`to PEG,are polyamino acids (e.g., poly-lysine, poly-glutamic
`acid, and poly-aspartic acid;
`see Gombotz, et al.
`(1995),
`Bioconjugate Chem., ‘vol. 6: 332-351; Hudecz, et al. (1992),
`Bioconjugate Chem., vol. 3, 49-57; Tsukada, et al. (1984), J.
`Natl. Cancer Inst., vol 73: 721-729; Pratesi, et al. (1985), Br. J.
`Cancer, vol.
`52: 841-848), particularly those of the L
`conformation,
`pharmacologically
`inactive
`proteins
`(e.g.,
`~ albumin; see Gombotz, et al. (1995) and the references cited
`therein), gelatin (see Gombotz, et al. (1995) and the references
`- cited therein), succinyl-gelatin (see Gombotz, et al. (1995) and
`the references cited therein), (hydroxypropyl)-methacrylamide
`(see Gombotz,et al. (1995) andthe references cited therein), a
`fatty acid, a polysaccaride,a lipid amino acid, and dextran.
`Id. at 4:52-5:3.
`The ’962 patent discloses that “[t]he polyethylene glycol polymers(or
`other molecular weight increasing agents) are preferably linked to an amino,
`carboxyl,or thio group, and maybelinked by N or C termini of side chains
`of lysine, aspartic acid, glutamic acid, or cysteine, or alternatively, the
`polyethylene glycol polymersor other molecular weight increasing agents
`may be linked with diamine and dicarboxylic groups.” Jd. at 5:42-48.
`
`‘
`,
`C. Challenged claims
`Challenges claims 1-3 and 7-9 ofthe 962 patent are reproduced
`below:
`-
`
`i
`
`3
`
`
`
`IPR2016-00355
`Patent 8,951,962 B2
`
`1. A compound comprising exendin-4, or agonist analog of
`exendin-4, linked to a polyamino acid through the C-terminal
`amino acid of the exendin-4 or agonist analog of exendin-4,
`wherein the agonist analog of exendin-4 comprises one or more
`naturally occurring amino acids deleted or replaced with another
`amino acid or amino acids and said polyamino acid is selected
`from the group consisting ofpoly(L-lysine), poly-“glutamic acid,
`and poly-aspartic acid.
`2. The compound according to claim 1, wherein the polyamino
`acid is poly(L-lysine).
`
`3. A pharmaceutical composition comprising the exendin-4,or
`agonist analog of exendin-4 according to claim 1 and a
`pharmaceutically acceptable carrier wherein the exendin-4, or
`the agonist analog of exendin-4 has‘a kidney clearancethatis less
`than 50% ofthe kidney clearanceofthe exendin-4,or the agonist
`analog of exendin-4 without the C-terminal linked polyamino
`acid.
`(
`
`7. A method for treating diabetes, postprandial hyperglycemia,
`or impaired glucose tolerance comprising administering to a
`human in need of
`treatment
`for diabetes, postprandial
`hyperglycemia, or impaired glucose tolerance a therapeutically
`effective amount of a composition according to claim 3.
`
`8. The methodfortreating diabetes according to claim 7.
`9. The method according to claim 8, wherein the diabetesis type
`
`II diabetes.
`
`.
`
`‘
`
`
`
`IPR2016-00355
`Patent 8,951,962 B2
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1—3 and 7-9 ofthe ’962 patenton the
`following grounds. Pet. 32-59.
`
`
`
`
`
`
`[Ground]Reference)[Basis]Claims}Challenged
`
`
`
`
`
`
`
`
`
`RE 3134 § 102(e)|1-3, 7-9
`
`Larsen PCT
`
`Larsen ’107
`
`|
`
`6
`
`
`
`§ 103(a)
`
`§ 103(a)
`
`
`
` |
`
`Petitionerrelies also onthe Declaration ofDr. S. Russ Lehrman (Ex.
`1002).
`
`1 International Application No. PCT/DK99/00118 to Bjarne Due Larsen,
`filed March 9, 1999, published in English as International Publication No.
`WO 99/46283 on September 16, 1999. Ex. 1009 (“Larsen PCT”).
`2 U.S. Patent No. 7,414,107 to Bjarne Due Larsen, issued August 19, 2008.
`Ex. 1010 (“Larsen ’107”). Larsen ’107 is a continuation of Larsen PCT.
`3 U.S. Patent No. 6,528,486 to Bjarne Due Larsenet al., issued March 4,
`2003. Ex. 1011 (“Larsen °486”).
`4 U.S, Patent No. RE45,313 to Bjarne Due Larsen etal., issued December
`30, 2014. Ex. 1012 (“RE ’313”). RE ’313 is a reissue of Larsen °486. |
`“5
`
`
`
`IPR2016-00355
`Patent 8,951,962B2
`
`‘
`
`Il. ANALYSIS
`~
`' A, Claim Interpretation
`In an interpartes review, the Board interprets aclaimterminan .
`unexpired patent accordingto its broadest reasonable construction in light of
`the specification of the patent in which it appears. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, No. 15-446, 2016 WL 3369425 (U.S.
`June 20, 2016).: Underthat standard, and absent any special definitions, we
`assign claim termstheir ordinary and customary meaning, as would be
`understood by one ofordinary skill in the art at the time of the invention,in
`the context of the entire patent disclosure. Jn re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). Only terms that are in controversy need to
`be construed,however, and then only to the extent necessary to resolve the
`controversy. Vivid Techs.; Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999).
`|
`Weinterpret the following terms ofthe challenged claims as part of
`our analysis. Based upon the facts presented, we determinethat the explicit
`construction of any other specificclaim term is unnecessary to reach our
`decision that Petitioner has established that there is a reasonable likelihood
`that it will prevail with respect to at least one of the challenged claims. See,
`e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir.
`2011) (“[C]laim terms need only be construed ‘to the extent necessary to
`resolve the controversy.””) (quoting Vivid Techs., 200 F.3d at.803)). At this
`stage of the proceeding, the Board has not madea final determination as to
`the construction of any claim term.
`
`~
`
`
`
`IPR2016-00355
`Patent 8,951,962 B2
`
`,
`-
`cS
`.
`1. “exendin-4*
`The "962 patent discloses that “[t]he amino acid sequence ofexendin-
`“4 is shown in FIG. 2.” Ex. 1001, 1:57—58; see also id.at 31:1-21. Using the
`standard three-letter codes for amino acids, Figure 2 shows the 39-amino
`acid polypeptide sequence for exendin-4 terminating in an amide:
`His: Gly Glu Gly Thr Phe Thr Ser Asp Leu Ser Lys Gin Met Gly Glu
`Glu Ala Val Arg Lew Phe Ite Glu ig Leu Lys Asn Gly ey Pro Ser
`SerGly“a ProPro ProSer-NH,
`|
`Fig. 2
`Exendin-4is also identified as SEQ ID NO: 2, which does not show-
`
`the polypeptide terminating in an amide. Petitioner directs us to SEQ ID
`NO:2 and contends that the broadest reasonable interpretation of “exendin-
`4” to a person of ordinary‘skill in the art would be SEQ ID NO:2, which
`does not require exendin-4 terminating in an amide. Pet. 27—28 (citing Ex.
`1002 §] 57-62).
`Weare not persuaded. Patent applications that contain a disclosure of
`an unbranched sequenceof four or more amino acids must comply with the
`requirements of 37 C.F.R. §§ 1.821—1.825 (“Sequence Rules”). The
`sequencelisting presents the polypeptide sequence of exendin-4 as SEQ ID
`NO: 2 in compliance with the Sequence Rules. Petitioner argues that the
`‘mere compliance ofthe Sequence Rulesis sufficient to lead-a person of .
`ordinary skill in the art to understand that exendin-4 does not terminate in an
`amide, despite the clear disclosure of the terminating amide in the
`specification of the ’962 patent. Ex. 1001, 1:57-58, 31:1-21. The evidence
`‘presented by Petitioner does not persuade us that a person of ordinary skillin.
`7 NO
`.
`7
`
`
`
`|
`
`7
`
`IPR2016-00355
`Patent 8,951,962 B2
`the art would understand that the specific chemicalstructure disclosed for
`exendin-4 should be altered because ofthe inventor’s compliance with the
`formalities ofthe Sequence Rules.
`|
`Wefind “exendin-4”tobe expressly defined in the 962 patent as the '
`amino acid sequence shownin FIG.2.
`_ Petitioner contends further that
`
`The “exendin-4” must also include a C-terminal aminoacid that
`is able to covalently link to a polyamino acid. A person of
`ordinary skill in art would understand that an exendin-4 “linked
`to a polyaminoacid through the C-terminal amino acid residue”
`would most likely be linked at the terminal carboxyl group. See
`Ex. 1002, 9 61. The amide that is normally found on this amino
`acid in exendin-4 would needto be absentfor the peptide to link
`to the polyaminoacid in that manner. Jd.
`Pet 28. Here, we distinguish between “exendin-4” and exendin-4 “linked to
`_a polyaminoacid through the C-terminal aminoacid.” Petitioner has
`presented sufficient evidence for usto find, at this stage of the proceeding,
`that the chemical structure of exendin-4 would need to be modified in order
`to be successfully linked to a polyaminoacid through the C-terminal amino
`acid to form an exendin-4—polyamino acid conjugate. Ex. 1002 {J 57-61.
`
`2. “agonist analog ofexendin-4”
`
`The term “agonist analog of exendin-4”is not expressly defined in the
`962 patent. However, the term “exendin agonist” is expressly defined as
`follows:
`
`a compound which mimics the effects ofexendins, e.g., on gastric
`motility and gastric emptying (namely, a compound which
`effectively binds to the receptor at which exendins exert their
`action on gastric motility and gastric emptying, preferably an
`.
`\
`
`8
`
`
`
`IPR2016-00355
`Patent 8,951,962 B2
`
`analog or derivative of an exendin) or a compound,e.g., that
`mimics the effects of exendin on the reduction of food intake by
`binding to the receptor or receptors where. exendin causesthis
`effect.
`Id. at 6:53-60 (emphasis added).
`The ’962 patent further discloses that “[e]xendin agonists include
`
`exendin peptide analogs in which one or more naturally occurring amino.
`acids are eliminated or replaced with another amino acid(s).” Id. at 11:34-
`
`36 (emphasis added).
`
`Petitioner directs our attention to the above passagesof the ’962
`
`patent and contendsas follows:
`
`From this perspective and in view of the specification’s use of
`the terms “exendin agonist” and “exendin peptide analogs,” a
`person of ordinary skill in the art would have understand the
`broadest reasonable interpretation of “agonist analog of exendin-
`4” to be “a compound whichis structurally substantially similar
`to exendin-4 and mimicsthe effects of exendin-4.”
`
`Pet. 30 (citing Ex. 1002 { 66).
`Weare persuadedbyPetitioner’s analysis and adopt Petitioner’s claim
`“construction for the phrase “agonist analog of exendin-4.” For the purposes
`of this Decision, “agonist analog of exendin-4” means “a compound which
`is structurally substantially similar to exendin-4 and mimics the effects of
`’ exendin-4.” yO
`B. Priority Claim ofthe ’962 patent
`_ Petitioner contendsthat the claims of the 962 patent are notentitled
`to the benefit of priority claim to U.S. Provisional Application No.
`60/132,018, filed April 30, 1999 (“the ’018 Provisional”) (Ex. 1003). Pet.
`22-25. Specifically, Petitioner contends that the 018 Provisional does not
`
`9
`
`
`
`IPR2016-00355
`Patent 8,951,962 B2
`
`provide adequate support for the “polyamino acids”limitation recited in the
`challenged claims, but ratheris “limited to peptides linked to PEG polymers
`and two other ‘molecular weight increasing agents’ (specifically albumin
`
`and gelatin).” Jd. at 23 (citing Ex. 1003, 10).
`Petitioner notes that during prosecution and reexamination of the ’962
`patent, Patent Ownerargued that “the incorporation by reference of the non-
`patent Gombotz & Pettit> article provides sufficient support for the
`polyaminoacidslimitation.” Jd. at 23 (citing Ex. 1054, 6; Ex. 1044, 6-8).
`Petitioner contends, however, that the ’018 Provisional cites Gombotz &
`Pettit only for its discussion of PEG, albumin andgelatin andthat it would
`be improper to incorporate essential material from other, uncited parts of the
`Gombotz & Pettit article. Jd. at 24 (citing Ex. 1002 4 48); see also Purdue
`Pharma L.P.v. Faulding, Inc., 230 F.3d 1320, 1326-27 (Fed. Cir. 2000)
`(“[O]ne cannot disclose a forest in the original application, and then later
`pick a tree out of the forest and say here is my invention. In orderto satisfy
`the written description requirement,the blaze marksdirecting the skilled
`artisan to that tree must bein theoriginally filed disclosure.”’).
`
`Petitioner further contends that our “Rules do not permit the
`
`incorporation by reference of essential material from non-patent
`publications.” Pet. at 24-25; see 37 C.F.R. § 1.57(d) (“Essential material’
`maybeincorporated by reference, but only by way of an incorporation by
`referenceto a U.S. patent or U.S. patent application publication, which
`
`5 Wayne R. Gombotz & Dean K.Pettit, Biodegradable polymersfor protein
`andpeptide drug delivery, 6 Bioconj. Chem. 332 (1995). Ex. 1004
`(“Gombotz & Pettit”).
`
`10
`
`
`
`IPR2016-00355
`Patent 8,951,962 B2
`
`patent or patent application publication does not itself incorporate such
`essential material by reference.”).
`The challenged disclosure in the ’018 Provisional states that:
`
`invention also provides for conjugation of an
`The present
`exendin or exendin agonist to one or more polymers other than
`polyethylene glycol which can regulate kidney clearance in a
`manner similar
`to polyethylene glycol. Examples of such
`polymers include albumin and gelatin. See, Gombotz andPettit,
`Bioconjugate Chern., 6:332-351, 1995, which is incorporated
`herein by referencein its entirety.
`The ’018 Provisional, 59:1-8. After consideration of the above cited portion
`of the 018 Provisional, we are persuaded by Petitioner’s argument and
`evidencethat the “polyaminoacids”limitation appearsto be essential
`material and that reliance on the disclosure of Gombotz and Pettit for
`adequate written description support for the “polyaminoacids” limitation
`recited in the challenged claims is improper. See 37 C.F.R. § 1.57(d).
`In view ofthe above,at this stage of the proceeding, we concludethat
`the claimsof the ’962 patent are not entitled the benefit of priority to the
`
`°018 Provisional.
`
`C. Petitioner’s Asserted Grounds of Unpatentability
`
`1. Anticipation ofClaims 1-3 by Larsen PCT
`
`Petitioner contends that claims 1—4 are anticipated by Larsen PCT.
`
`Pet. 35-40. Petitioner contends that Larsen PCT discloses exendin-4 as a
`
`pharmacologically active peptide to whicha “stabilising peptide sequence”
`maybelinked. Id. at 36 (citing Ex. 1009, 9:20, 10:20—22). Petitioner
`contends that Larsen PCTdiscloses that exendin-4 can be conjugated to the
`“stabilising peptide sequence” at the C-terminal aminoacid residue. Jd.
`11
`
`
`
`IPR2016-00355
`Patent 8,951,962 B2
`
`(citing Ex. 1009, 4:29-5:1, 18:5-13). Petitioner further contends that Larsen
`PCTdiscloses that the “stabilising peptide sequence” may be a “polyamino
`acid” such as poly(L-lysine), poly-glutamic acid, or poly-aspartic acid. Id. at
`36; Ex. 1009, 14:1-2; Ex. 1002, ] 83; see also, Ex. 1009, 5:10-15 (“Thus,in
`a first aspect the invention relates to a pharmacologically active peptide
`conjugate having a reduced tendency towards enzymatic cleavage, said
`peptide conjugate comprises: a pharmacologically active peptide sequence
`(X) anda stabilising peptide sequence (Z) of 4-20 amino acidresidues
`covalently bound to X, each amino acidresiduein said stabilising peptide
`sequence (Z) being independently selected from the group consisting of Ala,
`Leu, Ser, Thr, Tyr, Asn, Gin, Asp, Glu, Lys, Arg, His, Met, Orn... .”).
`Petitioner further provides a detailed claim chart explaining how each
`limitation of challenged claims 1-3 is disclosed by Larsen PCT. Pet. 37-40.
`At this stage of the proceeding, we determine that Petitioner has
`offered sufficient evidence and argumentto institute trial. We conclude,
`based on the currentrecord, that Petitioner has established a reasonable
`likelihood of prevailing on its assertion that claims 1—3 are unpatentable as
`
`anticipated by Larsen PCT.
`
`2. Anticipation ofClaims 1-3 and 7-9 by Larsen ’486
`
`Petitioner contends that claims 1-3 and 7-9 are anticipated by Larsen
`
`486. Pet. 46-56. Petitioner contends that Larsen ’486 discloses “several
`
`exendin variants that have at least 90% homology to exendin-4 and
`
`demonstrate exendin-4-like activity, such as being able to lower blood
`glucose levels in mammals and bind GLP-1 receptors.” Pet. 46 (citing Ex.
`1011, 5:27-37). Petitioner contendsthat Larsen ’486 discloses that the
`
`12
`
`
`
`IPR2016-00355
`Patent 8,951,962 B2
`
`“exendin variants are conjugated to a polyaminoacid (“peptide sequence
`Z”), which is typically between 4—20 aminoacid residuesin length.” Id.
`(citing Ex. 1011, 7:16—23, 8:1-6). The “peptide sequence Z” can be a
`polylysine, polyglutamicacid, or polyaspartic acid. Id. at 46-47 (citing Ex.
`1011, 8:1-16, 8:23-9:16, 10:26—33).
`
`Larsen 486 claimsthe benefit of priority to U.S. Provisional
`
`Application 60/143,591, filed July 12, 1999 (Ex. 1014) (“Larsen
`Provisional”). Petitioner contends that Larsen Provisional“contains
`sufficient — nearly verbatim — support for both the claims andthe
`specification of the Larsen ’486.” Pet 47. Petitioner providesa detailed
`discussion and claim charts explaining how eachlimitation of challenged
`claims 1-3 and 7-9 are disclosed in Larsen ’486 and Larsen Provisional.
`
`Atthis stage of the proceeding, we determinethat Petitioner has
`offered sufficient evidence that Larsen 486 is entitled to the benefit of
`
`priority to Larsen Provisional. Accordingly, Larsen ’486 qualifies as prior
`art to the "962 patent. Wefurther conclude, based on the current record,that
`Petitioner has established a reasonable likelihood of prevailing on its
`
`assertion that claims 1-3 and 7—9 are unpatentable as anticipated by Larsen
`
`°A86.
`
`3. Obviousness ofClaims 1 and 2 by Larsen PCT
`
`Petitioner contendsthat claims 1 and 2 are obvious in view of Larsen
`
`PCT. Pet. 56-57. Specifically, Petitioner contendsas follows:
`
`The Larsen [] PCT discloses exendin-4 — including the C-
`terminal amide — as a peptide that can be linked toa stabilising
`peptide through solid-phasepeptide synthesis. One ofskill in the
`art would have understood that the exendin-4 peptide would not
`
`13
`
`
`
`IPR2016-00355
`Patent 8,951,962 B2
`
`‘
`
`retain the amide functional groupatthe Cterminus of exendin-4
`if it were linked to a stabilising peptide through that
`methodology. Ex. 1002, § 108-115....
`The only significant difference between the primary
`structures of exendin-4 on its own and the same peptide
`conjugated to the stabilising peptide is the amide group.
`However, one skilled in the art would have had a reasonable
`expectation of success at creating the conjugate because the
`Larsen ‘118 PCT taught how to synthesize it. Ex. 1002, { 109.
`In fact, the Larsen ‘118 PCT disclosed a method of synthesizing
`such a peptide conjugate on a solid support one amino acid at a
`time, and therefore a deamidation step would not even be
`required. Ex. 1009, p. 27,ll. 9-11; Ex. 1002, {| 109.
`Pet. 56-57.
`In view ofthe above, we determine that Petitioner has offered
`sufficient evidence and argumentto institutetrial on this ground. We
`conclude, based on the current record, that Petitioner has established a
`reasonable likelihood ofprevailing onits assertion that claims 1 and 2 are
`unpatentable as obviousover the Larsen PCT.
`4. Petitioner’s Remaining Grounds
`Thepatent rules promulgated for AIA post-grant proceedings,
`, including those pertainingto institution, are “construed to secure the just,
`speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
`§ 42.1(b); see also 35 U.S.C.§ 316(b) (regulations for AIA post-grant
`proceedings take into account“the efficient administration ofthe Office”
`and “the ability ofthe Office to timely complete [instituted] proceedings”).
`Therefore, weexercise our discretion and, for reasons of administrative -
`necessity to ensure timely completionofthe instituted proceeding, do not
`
`xX
`
`44
`
`
`
`IPR2016-00355
`-
`*. Patent 8,951,962 B2
`
`. institute a review on any groundother than those specifically instituted in .
`the Order below. See 37 C.F.R. § 42.108(a).
`
`Il. CONCLUSION
`Weconcludethat Petitioner has established a reasonablelikelihood of
`prevailing onits assertions that claims 1-3 and 7—9 of the ’962 patent are
`unpatentable as anticipated and/or obvious.
`|
`Atthis stage of the proceeding, the Board has not madea final
`determination as to the patentability of any challenged claim or the
`
`" construction of any claim term. Thus, our view with regard to any
`~ conclusion reached in the foregoing could change upon consideration of
`
`Patent Owner’s merits response and upon completion ofthe record.
`
`IV. ORDER
`
`In consideration of the foregoing,it is hereby:
`
`7
`
`OY
`
`ORDEREDthatthe Petition is granted with regard to the following
`asserted grounds:
`:
`.
`A. Claims 1-3 ofthe 962 patent under 35 U.S.C. § 102 as
`anticipated by Larsen PCT;
`B. Claims 1-3 and 7-9 of the ’962 patent under 35 U.S.C. § 102 as
`
`_ anticipated by Larsen ’486; and
`C. Claims 1 and2 ofthe 962 patent under 35 U.S.C.§ 103(a) as
`obvious over Larsen PCT.
`.
`.
`
`‘ FURTHER ORDEREDthat pursuant to 35 U.S.C. § 314(a),inter
`partes review ofthe ’962 patentis hereby instituted commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 CFR.
`
`15
`
`
`
`IPR2016-00355
`Patent 8,951,962 B2
`
`§ 42.4, notice is hereby given ofthe institution ofa trial.
`FURTHER ORDEREDthatthetrial is limited to the groundslisted in
`
`the Order. No other groundsare authorized.
`
`PETITIONER:
`
`- Paul Berghoff
`berghoff@mbhb.com
`
`Joshua Rich
`rich@mbhb.com
`
`Andrew Williams
`williams@mbhb.com
`
`PATENT OWNER:
`
`David Berl
`dberl@we.com
`
`Dov Grossman
`dgrossman@we.com
`
`16
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
