Paper No. 20
`
`
`Trials@uspto.gov
` Filed: October 15, 2019
`
`
`571.272.7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEPTUNE GENERICS, LLC,
`Petitioner,
`
`v.
`
`AVENTIS PHARMA S.A.,
`Patent Owner.
`____________
`
`Case IPR2019-00136
`Patent 5,847,170
`____________
`
`
`Before TINA E. HULSE, CHRISTOPHER M. KAISER, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`
`MAJORS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing
`of Decision Denying Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`

`

`IPR2019-00136
`Patent 5,847,170
`
` INTRODUCTION
`Neptune Generics, LLC (“Petitioner” or “Neptune”) requests
`rehearing of our decision (Paper 15, “Decision” or “Dec.”) denying
`institution of inter partes review of claims 1 and 2 of U.S. Patent No.
`5,847,170 (Ex. 1001, “the ’170 patent”). Paper 16 (“Request” or “Req.”).1
`We deny the Request for the reasons explained below.
` STANDARD OF REVIEW
`In response to a request for rehearing, the panel reviews a decision
`whether to institute trial for an abuse of discretion. 37 C.F.R. § 42.71(c).
`An abuse of discretion may be found if there was an erroneous interpretation
`of law, a factual finding not supported by substantial evidence, or an
`unreasonable judgment in weighing relevant factors. 37 C.F.R. § 42.71(c);
`Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); The Arnold
`Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside,
`203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “The burden of showing a
`decision should be modified lies with the party challenging the decision.”
`37 C.F.R. § 42.71(d). Moreover, the rehearing request “must specifically
`identify all matters the [requesting] party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply.” Id.
` ANALYSIS
`As explained in the Decision, the Board denied institution of
`Petitioner’s inter partes review challenge on a discretionary basis under
`
`
`1 Petitioner also requested review of the Decision by the Precedential
`Opinion Panel (“POP”). Req. 1. The POP denied the request for POP
`review, and the original panel maintains authority over the present Request.
`Paper 19, 1–2.
`
`2
`
`

`

`IPR2019-00136
`Patent 5,847,170
`35 U.S.C. § 325(d). See generally, Dec. 25–37. We determined that non-
`institution was appropriate based on, inter alia, comparisons of the art and
`arguments in the present Petition and an earlier petition challenging the same
`claims of the same patent, which petition was filed by Mylan (Ex. 2011) and
`for which the Board denied institution (Ex. 2020).
`According to Petitioner, “the panel overlooked or misapprehended
`both the law of new chemical compound obviousness and the differences
`between Neptune’s and Mylan’s petitions.” Req. 4. That is so, Petitioner
`contends, because the art and arguments in the Petition are not similar,
`“much less substantially similar,” to the arguments presented by Mylan. Id.
`More specifically, Petitioner argues, the Board erred in its Decision in three
`ways: (1) in our comparison of Petitioner’s lead compound versus the lead
`compounds advanced by Mylan; (2) in finding the Commerçon reference
`and related argument cumulative to art and arguments raised in the Mylan
`petition; and (3) in our assessment of the similarities between the Wong and
`Klein references. Req. 5–15.
`We have considered Petitioner’s arguments, but we do not agree that
`the Decision denying institution under § 325(d) was in error. We address in
`greater detail below.
`
`Lead Compound
`In the Decision, we agreed with Patent Owner that, although
`Petitioner’s challenge urged a “different” lead compound (paclitaxel versus
`Kant’s compound 20 or docetaxel), that distinction was superficial on the
`record before us. Dec. 28. As Patent Owner persuasively argued,
`“Neptune’s and Mylan’s lead compound analyses arrive at the same
`compound; paclitaxel having a C-10 methoxy group and a BOC sidechain,
`i.e., Kant Compound 20.” Prelim. Resp. 20–21. And, as we also pointed
`
`3
`
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`

`IPR2019-00136
`Patent 5,847,170
`out, Petitioner turned to Kant for substantially the same reasons Mylan did—
`to show that a methoxy substitution at the core molecule’s C-10 position is
`capable of providing a more potent paclitaxel analog. Dec. 28; Ex. 2011, 6
`(explaining that Kant teaches “compound 20, which displays the best tubulin
`binding properties of all analogues studied, the highest efficacy of the
`studied analogues having a docetaxel side chain, and higher efficacy than
`paclitaxel”).2
`The Board did not find persuasive Petitioner’s argument that use of
`paclitaxel as the lead compound was sufficient to avoid discretionary denial
`on this record. Pet. 78; Paper 122–3. As we further explained,
`Kant relates to paclitaxel and its analogues. Ex. 1010, 1–2. And
`Kant describes the same advanced precursor (10-DAB-III) that
`is used for the synthesis of paclitaxel as being used to synthesize
`Kant’s analogues with a C-10 substitution. Id. The Board [in
`Mylan], however, considered Kant and other evidence on these
`very points, when declining institution of trial for the Mylan
`Petition. Ex. 2020, 5, 7–8, 12.
`Petitioner here urges that paclitaxel is a lead compound
`but, in much the same way as Kant, Petitioner’s modification of
`the art begins with 10-DAB-III, adding a side chain (with a BOC-
`containing group) and substituting a methoxy group at C-10. Pet.
`37–40. Plus, as Patent Owner points out, Petitioner uses Kant in
`substantially the same way as Mylan did to rationalize such
`modifications. Prelim. Resp. 21; see, e.g., Pet. 42–43, 46–47
`(“[M]ethylation of C-10 showed a desirable increase in activity
`when compared to similar BOC-containing paclitaxel analogs.
`Indeed, Kant Table II . . .”). That Mylan may have jumped ahead
`to Kant’s compound 20, citing its favorable properties as a reason
`
`
`2 Mylan’s chosen terminology, sometimes describing Kant’s Compound 20
`as C-10 methoxy docetaxel (as the compound includes a BOC sidechain like
`docetaxel) does not materially change our analysis of these similarities and it
`is undisputed that Kant, in fact, describes its compounds as being paclitaxel
`analogues. Ex. 1010.
`
`4
`
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`

`IPR2019-00136
`Patent 5,847,170
`for selecting and modifying it, while Petitioner gets to essentially
`the same compound in more than one step—with an arguably
`more thorough discussion on paclitaxel and the precursor used to
`make it and its analogues—does not, in our view, substantially
`or materially change the argument.
`
`Dec. 30–31. The Board did not misapprehend or overlook Petitioner’s
`arguments concerning lead compounds.3 We addressed them, as noted
`above. Although Petitioner disagrees with our assessment of the similarities
`between the petitions on this issue, such disagreement does not persuasively
`demonstrate error that requires the Decision be changed.
`In its Request, Petitioner contends the Board denied Mylan’s petition
`because it rejected Kant compound 20 as a lead compound. Req. 5–7 (“the
`Mylan decision . . . held that a POSA would not select Compound 20 as the
`lead compound”).4 Petitioner argues, inter alia, that “[n]ot a single one of
`the reasons the Board raised in rejecting Compound 20 as the lead applies to
`paclitaxel . . . and nothing in the Decision found to the contrary.” Id.
`(arguing “Mylan found that starting with Compound 20 as the lead
`
`
`3 Petitioner requested, and was granted, the opportunity for additional pre-
`institution briefing to address Patent Owner’s arguments in favor of § 325(d)
`discretionary denial. See generally Paper 13.
`4 It is also questionable whether Petitioner adequately addressed and
`developed pre-institution the arguments it is making now in its Request on
`this point. See 37 C.F.R. § 42.71(d). In the Request, Petitioner cites the
`Petition at pages 77–78, but those pages generically contend that “the Mylan
`petition relied upon completely different lead compounds.” Pet. 77–78; Req.
`5–6. Petitioner also cites to a footnote of the pre-institution Reply (Paper
`13). Req. 6–7 (citing Reply 2 n.1). That footnote is also generic, stating that
`“the Board denied Mylan’s petition, in significant part due to Mylan’s
`failure to establish Kant 20 as a lead compound.” Paper 13.
`5
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`

`IPR2019-00136
`Patent 5,847,170
`compound was not supported by the sole reference (Kant) Mylan cited in
`support of selecting it”).
`Petitioner’s arguments do not justify a change in the Decision. First,
`we do not understand the Mylan panel to have simply rejected Kant’s
`compound 20 as a potential lead as Petitioner suggests. In its more complete
`context, the Mylan panel was unpersuaded a POSA had a sufficient reason
`for further modifying Kant’s Compound 20 so both the C-7 and C-10
`positions would include methoxy groups to arrive at the claimed cabazitaxel.
`See Ex. 2020, 10–14. As we explained previously, the Mylan panel
`determined that Kant’s chemoselective approach to modifying the C-10
`position cut against also modifying the C-7 moiety, whether based on
`alleged increases in potency, lipophilicity, or for other reasons. Dec. 22–23;
`Ex. 2020, 12–13. The chemoselective approaches here (in Kant and Wong
`(or Klein)), where either C-7 or C-10 but not both are changed, also cut
`against the simultaneous C-7 and C-10 methoxy substitutions advanced in
`this Petition, even supposing one starts with paclitaxel or the advanced
`taxane precursor 10-DAB-III (just as Kant did). See Dec. 29, 32, 34
`(discussing overlap in the petitions’ simultaneous C-7, C-10 substitution
`theories).
`Second, Petitioner’s argument that “not a single one” of the reasons
`for rejecting Mylan’s challenge based on Kant Compound 20 applies to
`choosing paclitaxel as a lead is not accurate. Req. 5–6. As the Board noted
`in the Mylan decision, one reason cited against further modifying Kant’s
`Compound 20 to have methoxy groups at C-7 and C-10 (changes that would
`decrease aqueous solubility) was that “a POSA would have known that
`docetaxel and paclitaxel were highly lipophilic and insoluble in water.”
`Ex. 2020, 13 (emphasis added). Thus, contrary to Petitioner’s argument, the
`
`6
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`IPR2019-00136
`Patent 5,847,170
`concerns raised by the Mylan panel apply to paclitaxel and would apply to
`the C-7 and C-10 modifications Petitioner proposes be made here. Indeed,
`as the Decision notes, Mylan and Petitioner made substantially the same
`argument in an effort to address the drawback of decreased aqueous
`solubility arising from the methoxy modifications being proposed. Dec. 23,
`34 n.22.
`Petitioner argues the Mylan decision rejected making substitutions at
`both C-7 and C-10 to increase lipophilicity, whereas Petitioner relies on
`Commerçon and best laboratory practices, not Kant alone and not a
`lipophilicity rationale. Req. 7–8. We addressed this in our Decision in
`crediting Patent Owner’s argument and explaining the overlap in the reasons
`offered for making modifications at both C-7 and C-10 in both petitions.
`See, e.g., Dec. 29, 31–34 (addressing known structure-activity relationships,
`homologation, simplified synthesis, etc.). We are unpersuaded that
`removing a potential reason (increasing lipophilicity) for modifying the C-7
`and C-10 positions on the taxane, materially changes matters when other
`reasons are the same or substantially so—particularly when both Mylan and
`Petitioner offered the same explanation for why increased lipophilicity
`arising from the proposed modifications would not be of concern. Dec. 23,
`34 n.22. Nor do we agree with Petitioner’s suggestion that Mylan relied on
`Kant alone in its challenge. See, e.g., Ex. 2011, 14 (describing creation of
`more potent analogs based on Kant and Klein), 26–27, 33–34 (describing
`“attractive” sites (especially C-7 and C-10) on taxanes that were known (in
`the prior art) for substitution with small molecules, and allegedly simple,
`more “straightforward” modifications compared to chemoselective
`techniques); Dec. 22–23, 31–32.
`
`7
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`

`IPR2019-00136
`Patent 5,847,170
`Petitioner also argues Mylan’s challenge was rejected because Mylan
`had improperly picked certain teachings in Klein (C-7 modifications), yet
`dismissed others (C-9 modifications). Req. 9. According to Petitioner, that
`criticism “simply does not apply” to Neptune’s challenge. Id. This
`argument, however, ignores that art cited in this Petition, including
`Commerçon and Klein, teaches the flexibility of modifications at C-9
`(among other locations). Dec. 11, 21. And Petitioner, just as Mylan did,
`offered the same argument to explain why, notwithstanding the art’s
`recognition of C-9’s flexibility, the POSA would allegedly modify both C-7
`and C-10, but not C-9. Id. at 33. Moreover, as we explained in our
`Decision, Wong’s cited compounds (which Petitioner argues support C-7
`methoxy modifications) include an acetate moiety at C-10 (just as Klein’s
`did). Dec. 33. The presence of a C-10 acetate was cited by the Mylan panel
`too—indeed, as a further basis for concluding that the picking of methoxy
`groups for both C-7 and C-10 was rooted in hindsight. Ex. 2020, 16 (“We
`reach the same conclusion with respect to Klein’s C-10 acetyl.”). Hence,
`although Petitioner emphasizes what it regards as differences between its
`challenge and Mylan’s, we explained why we concluded that those
`differences did not outweigh the similarities sufficient to avoid discretionary
`denial. See, e.g., Dec. 32–33 (discussing Wong and Klein).
`Commerçon
`We found persuasive Patent Owner’s argument that Commerçon was
`cumulative to art and arguments that were before the Board in Mylan’s
`petition. Dec. 28–29; 31–32. As explained in the Decision, Mylan provided
`a detailed discussion of specific prior art and background knowledge
`possessed by the POSA, which we found to provide substantially the same
`
`8
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`IPR2019-00136
`Patent 5,847,170
`information as in Commerçon and Petitioner’s discussion of background art.
`Dec. 31–32. We noted:
`For example, the Mylan Petition addressed structure-activity
`relationships for taxanes, and cites abundant evidence on known
`modifications at various positions on the core, including
`“simultaneous” substitution at C-7 and C-10, as well as addition
`of a BOC group at C-3' on the side chain. See, e.g., Ex. 2011, 21–
`27 (citing “Remington,” “Burger,” “Mellado,” “Grover,”
`“Commerçon (Ex. 1016) [Ex. 1018 here],” and “Potier (Ex.
`1008) [Ex. 1005 here],” among other references); see also, e.g.,
`Ex. 2011, 23 (citing prior art disclosing that “‘[t]he 10-acetyl
`group does not affect the activity of paclitaxel or docetaxel in the
`reaction conditions examined . . . [t]hus the C-10 region is an
`attractive side for [substitution].’”) (citing prior art disclosing
`that “‘[A] free hydroxyl group at C-7 is not required for in vitro
`activity and this position
`is available for structural
`modifications.’”) (emphases added in Mylan Petition).
`
`Dec. 32. We do not agree with Petitioner’s contention that the Board erred
`in its analyses and conclusions on these points.
`
`In its Request, Petitioner contends that Commerçon was not a
`principal reference, or even cited, in Mylan’s petition. Req. 9–10. As such,
`Petitioner argues, the Mylan petition lacked the alleged “roadmap” provided
`by Commerçon’s Figure 2, which reveals the “well-defined changes that
`would lead one directly to the claimed cabazitaxel” in light of Kant and
`Wong. Id. (“[N]o better lead compound obviousness illustration could be
`presented than in the prior art by Commerçon Fig. 2.”). And, Petitioner
`contends, the Board’s “broad-brush” reliance on the background prior art
`discussed in the Mylan petition is clear error. Id.
`
`We disagree. We recognized that Commerçon was not cited in the
`Mylan petition but, as explained above, determined that other art cited in
`Mylan’s eleven pages detailing the background technology was similar to
`
`9
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`IPR2019-00136
`Patent 5,847,170
`and, on balance, cumulative with Commerçon’s disclosure—teaching, for
`example, that the C-7 and C-10 positions on taxanes were available and/or
`attractive sites for substitution. Dec. 31–32. Petitioner does not demonstrate
`persuasively why comparing, for purposes of a § 325(d) analysis, one relied-
`on reference that discloses potential sites for molecular substitutions to a
`collection of background references that provide substantially the same
`teaching is “error” on the record here.5 The POSA’s understanding is
`informed by all the relevant background knowledge and art, not a figure
`culled from one reference purporting to summarize otherwise known
`substitution sites. Dec. 11.
`Moreover, in reaching our conclusion, we did not overlook or
`misunderstand Commerçon’s Figure 2 or its other teachings. Quite the
`opposite, the Decision provides a detailed discussion on Commerçon, and
`Commerçon’s Figure 2 is itself reproduced in the Decision. Id. at 10–12.
`As noted in the Decision, Commerçon relates primarily to synthesis of
`docetaxel and docetaxel side-chain analogs. Id. Indeed, insofar as
`Commerçon actually describes changes that should be made or investigated,
`Commerçon’s focus is at the C-3' side-chain position—not individual, much
`less simultaneous changes to C-7 and C-10 of paclitaxel. In other words, the
`
`
`5 Petitioner’s allegation that the Board “compounded its error” in not
`considering Commerçon on its own (Req. 11–12) is unavailing for similar
`reasons. We see no error in our comparison of Commerçon and Petitioner’s
`background discussion versus the art and background discussion in the
`Mylan Petition. As we explained, after considering the totality of the art and
`arguments, we concluded they were substantially the same. Dec. 30–35.
`10
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`IPR2019-00136
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`so-called “roadmap” from paclitaxel to the claimed compound is neither
`evident nor clear from Commerçon as Petitioner now suggests.6
`
`Petitioner also argues we misapprehended or overlooked Petitioner’s
`reliance on Commerçon when we allegedly adopted the position that
`Commerçon merely disclosed that functional groups at C-7 and C-10 were
`available for substitution. Req. 10–11. That is not what the Board did. To
`the contrary, as noted above, we included Commerçon’s Figure 2 (to the
`extent it identifies sites other than C-7 or C-10 that are “flexible”) and the
`Board expressly mentioned Commerçon’s disclosure about, for example,
`tolerance for molecular changes at certain portions of the diterpene core (i.e.,
`positions 7, 9, 10, and 19). Dec. 12. So too, we observed Commerçon’s
`teaching that BOC substitution at the 3'-nitrogen position (as in docetaxel)
`remains a substituent of choice. Id. at 10–11; see also id. 12–13 (noting
`similar teachings in Kant that paclitaxel analogues with BOC side chains
`resulted in potent compounds).
`
`
`6 The Federal Circuit also recently held that Commerçon did not point to
`simultaneous C-7 and C-10 methoxy substitutions, tacitly rejecting
`Petitioner’s “roadmap” theory. As the court explained:
`Commerçon disclosed that C3', C7, C9, and C10, and to a more
`limited extent C2', were modifiable. And as summarized above,
`the other references [e.g., Kant, Wong, Klein] investigated a
`diverse set of substitutions. [Appellant] reads this panoply of
`teachings as rendering obvious simultaneous C7 and C10
`methoxy substitutions. But despite the apparent interest in
`taxane analogs, not a single reference relied on by [Appellant]
`made simultaneous substitutions of any kind at C7 and C10.
`See Sanofi-Aventis U.S., LLC v. Fresenius Kabi USA, LLC, Case No. 2018-
`1804, slip op. at 15, 16, 18–21 (Fed. Cir. Aug. 14, 2019) (holding that the
`obviousness arguments were “emblematic of hindsight reasoning” and
`affirming the district court’s judgment that claims 1 and 2 of the ’170 had
`not been shown invalid).
`
`11
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`IPR2019-00136
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`As for Petitioner’s citation to Commerçon as disclosing that certain
`other positions (e.g., C-4, C-5) at the bottom of the molecule being “crucial”
`and, thus, not being changed, we do not agree that such disclosure results in
`a material difference relative to the art and arguments raised previously
`before the Office that is sufficient to avoid discretionary denial. Req. 11–12;
`Pet. 28–29. Petitioner does not cite, nor do we discern, any part of the
`Board’s Mylan decision that hinged on a concern or finding that the
`allegedly “crucial” portions of the molecule would be changed. The focus in
`Mylan’s petition, as here, was on the reasons for modifying the C-7 and C-
`10 positions (and, to a lesser extent, the reasons for not modifying C-9).
`But, as we explained, the flexibility, suitability, and attractiveness of those
`specific positions for modification was well known as evidenced by art
`before the Mylan panel and this panel.7 See Dec. 10–16, 30–35; Ex. 2011, 1,
`5–9, 16–27; Ex. 2020, 6–10. Section 325(d) does not require the art or
`arguments be identical to what the Office previously considered. And the
`Board is not foreclosed from considering the art and arguments in the
`respective records as a whole when exercising discretion under § 325(d).
`Petitioner’s contention that it presented non-cumulative arguments in
`its background section compared to Mylan’s petition is also unavailing.
`Req. 12–13; see, e.g., Dec. 33–34. What Petitioner primarily cites are
`additional rationales that Mylan offered (e.g., motivation to increase analog
`lipophilicity), which Petitioner contends it did not raise. Req. 12–13. As we
`discussed above, we are unpersuaded that de-emphasizing or removing a
`
`
`7 Petitioner’s own filings also concede that art besides Commerçon,
`including importantly Klein, disclosed that certain positions at the bottom of
`the molecule, such as C-4, were “crucial.” Pet. 42 (citing Klein 276, 280).
`12
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`

`IPR2019-00136
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`rationale for potentially modifying the taxane molecules to arrive at the
`claimed cabazitaxel in the present Petition is sufficient to avoid discretionary
`denial under § 325(d). To the extent there are alleged “differences” in the
`petitions, we have addressed those above and in the Decision. Dec. 30–35.
`Contrary to Petitioner’s contentions, we do not agree that the manner in
`which we did so demonstrates “error” or an abuse of discretion. Req. 13–14.
`Wong versus Klein
`According to Petitioner, “[n]o reasonable examiner reviewing Klein
`and Wong would find these references remotely similar.” Req. 14.
`Petitioner alleges that Klein “discloses 9-dihydrotaxane analogs,” not
`“paclitaxel analogs” like Wong. Id. Petitioner also repeats its contention
`that one of the reasons cited by the Board in Mylan for rejecting the petition
`was Mylan’s selection of Klein’s favorable C-7 modification, but not Klein’s
`C-9 modification. Id. at 15.
`We noted the differences in Klein and Wong in the Decision (Dec.
`28–29, 31–33) and in our analysis above (supra, 8–9). We also pointed out
`what we find are the substantial similarities between the art and arguments
`based on Wong versus Klein, and why we concluded that exercise of
`discretion under § 325(d) was appropriate in light of those and other
`similarities. Dec. 28–29, 31–33; supra, 8–9). We need not repeat that
`analysis here.
`Moreover, if Klein’s compounds are so different from paclitaxel or
`Wong’s compounds, as Petitioner now contends, that fails to explain why
`Petitioner expressly cited Klein (Pet. 44) in the Petition as evidencing a
`reason that the skilled artisan would not make changes at C-9 of Petitioner’s
`proposed, modified paclitaxel compound. Klein’s compounds are
`reasonably considered paclitaxel and docetaxel analogs. Indeed, its present
`
`13
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`IPR2019-00136
`Patent 5,847,170
`arguments notwithstanding, Petitioner earlier described Klein’s Table 1 as
`“comparing Taxol® [i.e., paclitaxel] and its direct analog 9-Dihydrotaxol
`(Klein compound 12).” Pet. 44 (emphasis added); see also Ex. 1016, 279
`(describing preparations of 9(R)-dihydrotaxotere, a docetaxel analog). Also,
`the only apparent difference between the compound from Klein that Mylan
`relied on and the compound from Wong that Petitioner relies on is at the C-9
`position. Compare Ex. 1016, 281 (Table III), with Ex. 1011, 22:46–59.
`Klein reduces the carbonyl (CO) at C-9 in its example, and Wong does not.
`Id.; Dec. 32–33. We explained why that difference did not avoid
`discretionary denial. Dec. 32–33; supra, 8–9.
`At bottom, Petitioner disagrees with our comparison of Wong and
`Klein. But that disagreement does not show that we erred.
`Other
`In a footnote, Petitioner alleges that the Board erred in finding that
`related district court litigation supported non-institution. Req. 15 n.1.
`According to Petitioner, “this [litigation] was not an independent reason to
`decline institution.” Id. We did not, however, treat the litigation as an
`independent reason to exercise our discretion here. As we noted, we
`considered the completed district court litigation and then-pending appeal to
`the Federal Circuit only as an “adjunct” to our § 325(d) analysis. Dec. 35–
`37. We also declined to reach the issue of discretionary denial under
`§ 314(a) and, therefore, did not “rely[] wholesale on the District Court’s
`order” as part of a § 314(a) analysis (e.g., applying General Plastic
`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip
`op. at 8–10, 16–19 (PTAB Sept. 6, 2017) (Paper 19) (precedential)) as
`Petitioner asserts. Req. 15 n.1. Petitioner’s allegations on these points do
`not demonstrate error and, thus, we decline to change the Decision.
`
`14
`
`

`

`Granted
`
`Denied
`
`Wong
`Kant
`Commerçon
`Bouchard
`
`
`
`
`
`
`1, 2
`1, 2
`1, 2
`2
`
` CONCLUSION
`For the foregoing reasons, we conclude that Petitioner has not
`demonstrated that we abused our discretion in denying institution under
`35 U.S.C. § 325(d). Accordingly, the Request is denied.
`Outcome of Decision on Rehearing:
`Claims
`35
`Basis
`U.S.C.
`§
`
`§ 103
`§ 103
`§ 103
`§ 103
`
`IPR2019-00136
`Patent 5,847,170
`
`
`1, 2
`1, 2
`1, 2
`2
`
`
`
`15
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`

`IPR2019-00136
`Patent 5,847,170
`PETITIONER:
`
`Alexander E. Gasser
`Sarah Spires
`SKIERMONT DERBY LLP
`agasser@skiermontderby.com
`sspires@skiermontderby.com
`
`
`
`PATENT OWNER:
`
`Daniel J. Minion
`Dominick A. Conde
`William E. Solander
`Melinda R. Roberts
`VENABLE LLP
`DMinion@Venable.com
`DConde@Venable.com
`WSolander@Venable.com
`MRRoberts@Venable.com
`
`
`
`
`
`
`
`16
`
`