Decision on Petitioner’s Request for Rehearing IPR2014-00116


Takeaway: In a decision on a request for rehearing, the Board indicated that while it is bound by precedential case law, it is not necessarily bound by the USPTO Manual of Patent Examining Procedure (M.P.E.P.).

In its Decision, the Board considered a Request for Rehearing that had been filed by Patent Owner in response to the Board’s earlier Decision instituting inter partes review of claims 1-12, 14-24, and 26-30 of the ‘745 patent.  A primary focus of the Board’s analysis was whether the ‘745 patent was entitled to claim priority to an earlier ‘306 provisional application.

Specifically, Patent Owner had requested rehearing of the conclusion in the Board’s Decision on Institution that the ‘745 patent was not entitled to claim priority to the filing date of the provisional ‘306 application because, according to the Board, there was a break in the priority chain between the ‘745 patent and the provisional ‘306 application at an intervening ‘718 application (and the ‘226 patent that issued from the ‘718 application).  If the ‘745 patent was entitled to claim priority to the ‘306 application, then the relied-upon prior art would not be available for use in proving unpatentability of the challenged claims.

Patent Owner relied on M.P.E.P. 608.01(p) to argue that “an application is entitled to rely upon the filing date of an earlier application, even if the earlier application itself incorporates essential material by reference to another document,” and that, therefore, “the incorporation by reference of the ‘806 application (the ‘308 patent) in the ‘718 application incorporated by reference all the earlier filed patent applications which had been expressly incorporated by reference into the ‘806 application (the ‘308 patent), including the ‘306 Provisional.”  The Board noted that it was not necessarily bound by the M.P.E.P., but that it was bound by precedential case law, including Federal Circuit cases that it cited for the proposition that “to incorporate material by reference, ‘the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.’”  The Board then went on to find that Patent Owner had not explained sufficiently, in either its Preliminary Response or Request for Reconsideration, “how incorporating by reference the ‘806 application (the ‘308 patent), which itself incorporates by reference four different patent documents,” meets this standard.  The Board further noted that Patent Owner had not explained “sufficiently how one would know where such material could be found upon reading the sentence in the ‘226 patent stating simply that it incorporates by reference the ‘806 application (the ‘308 patent), especially when the ‘226 patent itself fails expressly to incorporate by reference the other four listed patent documents, including the ‘306 Provisional.”

Patent Owner proffered other priority arguments that the Board likewise found unconvincing.  For example, Patent Owner asserted that the Board did not address a Utility Patent Application form that had been filed with the ‘781 application on which Patent Owner had checked Boxes 5b and 18 in order to indicate that the entire disclosure of the ‘806 application had been incorporated by reference.  The Board found that this assertion did not adequately show that the Decision on Institution needed to be modified or had misapprehended or overlooked this argument, because Patent Owner had not cited sufficient legal authority in support for its position, and because Patent Owner did not indicate where this assertion had been raised in its Preliminary Response.  The Board found Patent Owner’s other priority arguments unconvincing as well.

Thus, the Board concluded that Patent Owner had not shown that the Decision on Institution was based on an erroneous interpretation of law, or that it otherwise constituted an abuse of discretion.  Accordingly, the Board denied Patent Owner’s Request for Reconsideration.

Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116
Paper 13: Decision on Petitioner’s Request for Rehearing

Dated: May 22, 2014

Patent: 8,288,745

Before: Lora M. Green, Francisco C. Prats, and Jacqueline Wright Bonilla
Written by: Bonilla