Specifically, Petitioner explained that it seeks to serve upon Dr. Noyes, the listed inventor for the challenged patents, 14 interrogatories “drawn mainly to his education, training and professional experience, including teaching and research experience, as well as any medical products or devices (both FDA and non-FDA regulated) that he may have been involved in developing.” Ex. 3001 (Petitioner’s email to PTAB Trials, dated October 21, 2020).

In particular, Petitioner’s expert makes no mention of research or collaborative work in polymer science, neither in his testimony (Ex. 1003 ¶¶ 2–12) nor in his CV (Ex. 1004).” Id. Patent Owner’s contention refers to our description of a person of ordinary skill in the art in the Institution Decision.

Thus, Petitioner seeks to scrutinize the education and experience of Dr. Noyes to determine whether he, himself, has such an understanding of polymer science.

Moreover, during the conference call, when asked, we did not hear any reasonable explanation as to why Petitioner waited until now to request the additional discovery.

Insofar as Petitioner seeks that information to compare the background of the inventor with the background of its declarant, we do not find that such a comparison would be useful to the issue serving as the basis of Petitioner’s request, i.e., whether Petitioner’s IPR2020-00002 (Patent US 8,257,723 B2) IPR2020-00004 (Patent US 7,744,913 B2) declarant is qualified to provide opinion testimony in these proceedings from the perspective of a person having ordinary skill in the art.

And moving on to patent owners’ motion to amend, I’ve already touched on it some but just to sum it up, on slide 53 we’ve reproduced the first proposed amended claim…pardon me…as I have stated none of these proposed amendments ...

If we move to slide 56, now petitioner’s expert Dr. Georgiou explains none of the functional limitations proposed in the amended claims actually modify the polypeptides.

This implies that none of the expressed protein was transported to the periplasm.

Before ULRIKE W. JENKS and SUSAN L. C. MITCHELL, Administrative Patent Judges.

MITCHELL, Administrative Patent Judge.

Patent 8,530,171 B2 Patent Owner Pfenex, Inc. (“Pfenex”) requested a one-month extension of time for filing its Preliminary Response in this proceeding.

Pfenex states that good cause exists for the extension because another case involving the same parties and a motion to amend has an oral hearing set at essentially the same time as Pfenex’s Preliminary Response is due in this case.

Accordingly, it is ORDERED that Pfenex’s request for a one-month extension of time to file its Preliminary Response in this proceeding is granted.