Decision Denying Petitioner’s Request for Rehearing IPR2013-00510


Takeaway: Petitioner’s burden of proving inherent disclosure by a prior art reference is not met by mere attorney argument.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision denying inter partes review of claim 19 of the ‘155 patent.  Although the Petition had challenged each of claims 1-23, the Request for Rehearing only dealt with claim 19.

Petitioner’s Request for Rehearing contended that the Board’s denial of inter partes review of claim 19 was based on legal errors in connection with the following grounds unpatentability that Petitioner had asserted: (1) inherent anticipation or obviousness over Bowser; (2) obviousness over Bowser and Cardin; and (3) obviousness over Bowser, Schwen, and Gibson.  Petitioner asserted that such alleged legal errors had resulted in an abuse of discretion by the Board.

According to the Board, Petitioner was basically asserting in its Request for Rehearing that the Board had overlooked or had applied an incorrect legal standard to evidence submitted by Petitioner that Bowser inherently describes a cationic guar derivative having a molecular weight within the range specified in claim 19, i.e., “from about 100,000 to about 400,000.”  Although Petitioner had conceded that Bowser is “facially silent” as to the recited molecular range, Petitioner nevertheless had argued that a different patent to Bartolo established that Bowser inherently discloses the cationic guar having the molecular weight limitation recited in claim 19.

The Board found that the evidence raised in the Petition on this point was insufficient to support Petitioner’s inherency argument.  In doing so, the Board pointed out that the burden is on Petitioner to prove the asserted inherency, and that in this case Petitioner had failed to identify evidence that made it clear that the missing descriptive matter was necessarily present in the Bowser reference.  Referring to declaration testimony that Petitioner had submitted, the Board noted that bare attorney argument falls short of establishing an inherent disclosure and that inherent disclosure cannot be proven by “probabilities or possibilities.”

The Board thus concluded that the evidence presented by Petitioner was insufficient to establish a reasonable likelihood that Petitioner would prevail at trial with respect to claim 19, and that Petitioner had not shown that the Board had exhibited an abuse of discretion in denying inter partes review of claim 19.  Accordingly, Petitioner’s Request for Rehearing was denied.

Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2013-00510
Paper 11: Decision Denying Petitioner’s Request for Rehearing

Dated: June 03, 2014

Patent 6,649,155 B1
efore: Lora M. Green, Grace Karaffa Obermann, and Rama G. Elluru
Written by: Obermann