In its Decision, the Board denied institution of inter partes review, holding that Petitioner had not established a reasonable likelihood that it would prevail with respect to any challenged claim in the ’032 patent. The ’032 patent generally relates to a self-assembling peptide comprised of polar and nonpolar amino acid residues, having a non-zero peptide charge at neutral pH, and forming a beta-sheet structure in an aqueous solution.
Petitioner did not argue that any claim term should take on a meaning other than its ordinary and customary meaning, and Patent Owner did not address claim construction in its Preliminary Response. The Board analyzed the Petition on the basis that the claim terms are given their ordinary and customary meaning as understood by one of ordinary skill in the art in the context of the ’032 patent.
Regarding the anticipatory grounds of unpatentability, Petitioner alleged that some of the features of the claims were inherently disclosed in the reference. However, Petitioner did not provide a declaration or other documentary evidence in support of its inherency argument, and instead relied on attorney argument to satisfy its burden of persuasion on that issue. Patent Owner responded that, in the absence of a declaration, Petitioner cannot rely on the asserted inherency argument. The Board agreed with Patent Owner, explaining that 37 C.F.R. § 42.65(a) “requires an expert who gives opinion testimony in an inter partes review to ‘disclose the underlying facts or data on which the opinion is based,’ otherwise the opinion is entitled to little or no weight.”
Petitioner also asserted an obviousness ground of unpatentability. However, the Board agreed with Patent Owner that Petitioner never addressed “why one of skill in the art would have had reason to modify the peptide as suggested and still expect to form a beta (β)-sheet.” Specifically, Petitioner did not explain or support, with precise citations and/or declaration evidence, why one of skill in the art would modify the references in the manner suggested by Petitioner. Therefore, the Board was not persuaded, in the absence of supporting testimony, or a more in-depth analysis of the teachings of the references supported with precise citations, that Petitioner had made a sufficient showing of obviousness.
3D-Matrix, Ltd. v. Menicon Co., Ltd., IPR2014-00398
Paper 11: Decision Denying Institution of Inter Partes Review
Dated: August 1, 2014
Patent: 8,299,032 B2
Before: Jacqueline Wright Bonilla, Donna M. Praiss, and Brian P. Murphy
Written by: Murphy