Takeaway: A request for rehearing by Petitioner to increase the number of instituted claims based on a particular ground of unpatentability may instead, in some circumstances, result in a reduction in the number of claims instituted based on that particular ground.
In its Decision, the Board modified a previous Order in its Decision instituting inter partes review. This was in response to a Request for Rehearing filed by Petitioner.
The original Petition challenged claims 1-94 of the ‘351 patent, after which Patent Owner filed its Patent Owner Preliminary Response. The parties then filed a Joint Motion, which the Board ultimately granted, to limit the Petition to claims 1-6, 9, 12-13, 19-29, 32, 35-36, and 42-46.
The Board next instituted trial based on Petitioner’s challenges to claims 1, 3-6, 9, 12, 13, 19-24, 26-29, 32, 35, 36, and 42-46 (but not claims 2 and 25) as anticipated by a first reference (Beaudoin I); and on all challenged claims as having been obvious over a second set of prior art references. Petitioner, in reply, filed the above-mentioned Request for Rehearing in which it asked the Board to reconsider its denial to institute review of claims 2 and 25 as anticipated by Beaudoin I.
Petitioner asserted two points in its Request for Rehearing: (1) that the Board had incorrectly applied the standard of inherent anticipation; and (2) that the Board had overlooked an express disclosure within Beaudoin I of a phospholipid concentration within the claimed range. Although the Board indicated that it had addressed both express and inherent anticipation in its original Decision, it granted Petitioner’s Request for Rehearing in order to explain in greater detail why it had denied Petitioner’s ground of anticipation of claims 2 and 25 by Beaudoin I.
Regarding the issue of inherency, Petitioner had argued that since the processes of the challenged ‘351 patent and the prior art Beaudoin I reference were “virtually indistinguishable,” the subject matter recited in claims 1 and 24 was inherently disclosed by Beaudoin I. Petitioner also provided declaration evidence in support of its inherency positions. In its initial Decision instituting inter partes review, the Board relied on Petitioner’s declaration evidence to conclude that there was a reasonable likelihood that Petitioner would prevail on the ground that Beaudoin I anticipates claims 1 and 24. Nonetheless, the Board found that Petitioner had not asserted the “virtually indistinguishable” process argument in relation to claims 2 and 25 in its Petition.
As for the issue of express disclosure, Petitioner pointed to Table I of Beaudoin I as teaching certain concentration percentages of phospholids and polar material. Nonetheless, the Board replied that the description in Table I of Beaudoin I of concentration percentages of phospholids and other polar material did not explicitly disclose a total of phospholid concentration as recited in challenged claims 2 and 25. Instead, Table I of Beaudoin I described percentages “of material having phospholids (at some undisclosed concentration) plus ‘other polar material’ (at some undisclosed concentration).” Thus, Petitioner did not sufficiently explain in either its Petition or Request for Rehearing how the concentration of claims 2 and 25 could be found anywhere in Beaudoin I. Petitioner also asserted in its Request for Rehearing that Beaudoin I would have rendered claims 2 and 25 obvious, but the Board did not consider this position because it was not raised in the Petition.
In view of the foregoing, the Board found that Petitioner had not established that the Board abused its discretion when finding that Petitioner had failed to establish a reasonable likelihood that it would prevail on the ground that Beaudoin I anticipates challenged claims 2 and 25, whether expressly or inherently. The Board then went on to take essentially the same position with respect to previously-instituted claims 3 and 26, as it had with respect to claims 2 and 25, leading the Board to modify its previous Decision by denying Petitioner’s ground that Beaudoin I anticipates claims 3 and 26.
Thus, in addressing Petitioner’s Request for Rehearing asserting that trial should be instituted based on the ground of anticipation for claims 2 and 25, the Board not only maintained its denial of such institution, but also withdrew its previous institution of trial on the ground of anticipation for claims 3 and 26.
Aker Biomarine AS v. Neptune Technologies and Bioressources Inc., IPR2014-00003
Paper 45: Decision on Petitioner’s Request for Rehearing
Dated: May 16, 2014
Patent 8,278,351 B2
Before: Lora M. Green, Jacqueline Wright Bonilla, and Sheridan K. Snedden
Written by: Bonilla