Denying Institution IPR2014-00512

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Takeaways: An application for a grant that becomes available via a FOIA request upon the date the grant is awarded may not be considered available to the public for prior art purposes on that date if the applicant still has an opportunity to remove confidential information from the application. In addition, a prior art reference’s incorporation of another document by reference must be made with detailed particularity.

In its Decision, the Board denied institution of an inter partes review, finding that Petitioner failed to establish a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims.

The ’550 patent concerns the use of “a ‘Mycobacterium smegmatis porin (Msp)’ to detect analytes in liquid media.”  Turning to claim construction, the Board noted that claims in an unexpired patent are interpreted using the “broadest reasonable construction in light of the specification.”  However, the Board determined that no terms needed to be construed for its Decision.

Turning to the grounds of unpatentability alleged in the Petition, the Board first addressed the availability of two references (Gundlach Grant and Gundlach Supp.) as prior art. Petitioner asserted that the two documents, which are grant applications to the National Human Genome Research Institute, were available as prior art once grants were awarded for the applications, thereby making them available under FOIA requests.  Patent Owner argued that although grant applications may be accessible via a FOIA request, the submitter of the application “is given the opportunity to remove confidential material from the grant application before a copy of the application is released to the public requester.”  Thus, Patent Owner contended, they are not available as prior art when they can be requested via a FOIA request.  In addition, Patent Owner argued that Petitioner had not shown that the redacted versions that were submitted with the Petition and were obtained after the filing date of the ’550 patent “would have been the same as copies obtained pursuant to a FOIA request filed on the grant dates.”

The Board agreed with Patent Owner, finding that Petitioner had not established that the two references constituted prior art. In particular, the Board noted that the significant redactions in the documents that were obtained after the filing date indicated that the documents “were subject to significant revisions before disclosure to the public.”  Thus, the Board found the documents to establish only what was publicly available at the time Petitioner received them, and not when the grant applications were awarded.  Thus, the Board denied institution of grounds that relied upon these two references.

With regard to the asserted ground of obviousness based on Akeson combined with any one of Butler, Wong, or Faller, Petitioner argued that Akeson discloses all the features of the challenged independent claims except for the use of an Msp porin. Petitioner asserted that one would have been motivated to modify Akeson to use an Msp porin as disclosed in Butler, Wong, and Faller, arguing that the combination was “nothing more than the predictable use of a prior art element according to its established function.”  In particular, Petitioner relied upon Akeson’s incorporating another patent (the ’782 patent) by reference for the disclosure of the desirability to use “porins with short constriction zones to improve monomer resolution.”

The Board was not persuaded, holding that Petitioner had not “advanced a rational underpinning sufficient to support the obviousness challenges.” In particular, the Board noted that although Akeson incorporates the ’782 patent by reference (alongside ten other patents and applications), Akeson does not incorporate the particular disclosure relied upon by Petitioner with detailed particularity, as required by Federal Circuit case law.  Further, the Petition did not rely upon the ’782 patent in its listed grounds of unpatentability.

With respect to obviousness based on Akeson without the incorporated subject matter, the Board found that the Petition failed to provide sufficient reasons to modify the prior art according to the claims. In particular, Petitioner did not identify the specific teachings in Butler, Wong, or Faller that would have suggested the proposed substitution in Akeson.  The Board also noted that the Branton Declaration provided by Petitioner included six pages of claim charts detailing the disclosures of Butler, Wong, and Faller as well as two paragraphs setting forth support for the obviousness rationale related to those three references.  However, the Board found that “essentially none of the discussion in the cited paragraphs of the Branton Declaration, allegedly explaining why an ordinary artisan would have combined Akeson with Butler, Wong, or Faller, appears in the Petition.”  The Board found the discussion to be an improper incorporation by reference, 35 C.F.R. § 42.6(a)(3), and declined to consider the arguments.

Finally, with respect to obviousness based on Stahl and any one of Akeson, Butler, or Wong, the Board was not persuaded by Petitioner’s arguments for similar reasons discussed above. In particular, the Board indicated that the Petition did not discuss the prior art systems with sufficient specificity and did not adequately support its alleged motivation to modify the prior art systems.  Once again, the Board pointed out that the Petition cited to two paragraphs of the Branton Declaration as explaining why one of skill in the art would have combined the references.  However, the Board declined “to import the extensive discussion regarding obviousness from the declarations . . . based solely on the Petition’s citation of certain paragraphs within the declarations.”

Oxford Nanopore Technologies Ltd. v. University of Washington and UAB Research Foundation, IPR2014-00512
Paper 12: Decision Denying Institution of Inter Partes Review
Dated: September 15, 2014
Patent: 8,673,550 B2
Before: Francisco C. Prats, Jacqueline Wright Bonilla, and Sheridan K. Snedden Written by: Prats
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elated Proceeding: IPR2014-00513