Boxinterferences@uspto. gov
`Tel: 571-272-4683
`
`Entered: June 26, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ANDREA PASTORIO
`and PAOLO BETTI
`
`Junior Party,
`(Patent 8,304,559)
`
`v.
`
`ANATLEVIN
`and MICHAEL GRABARNICK,
`
`Senior Party,
`(Application 13/926,389)
`
`Patent Interference No. 105,995
`(Technology Center 1600)
`
`Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and
`DEBORAH KATZ, Administrative Patent Judges.
`
`LANE, Administrative Patent Judge.
`
`Decision on Motions- Bd. R. 121(a)
`
`FINCHIMICA EXHIBIT 2012
`ADAMA MAKHTESHIM v. FINCH/MICA
`CASE IPR2016-00577
`
`

`

`
`
`I.
`
`Introduction
`
`The interference was declared under 35 USC 135(a) 1 on 6 February 2014.
`
`Junior party, Andrea Pastorio and Paolo Betti (Pastorio), is involved in the
`
`interference on the basis of its patent 8,304,559. Senior party, Anat Levin and
`
`Michael Grabarnick (Levin), is involved in the interference on the basis of its
`
`application 13/926,389. (Declaration, Paper 1).
`
`The following motions are before us for decision.
`
`Pastorio
`
`1. Pastorio Motion 1 for judgment on the basis of no interference-in-fact. (Pastorio
`
`Motion 1, Paper 25).
`
`2. Pastorio Motion 2 to substitute proposed count 2 for Count 1. This motion is
`
`said to be contingent on the denial of Pastorio Motion 1. (Pastorio Motion 2,
`
`Paper 57, at 1:2-6).
`
`3. Pastorio Motion 3 to add reissue application 14/534,001, filed on 5 November
`
`2014 (Ex 2026), to the interference. This motion is said to be contingent on,
`
`inter alia, the grant of Levin Motion 1. (Pastorio Motion 3, Paper 73, at 1:13-
`
`15).
`
`Levin
`
`1. Levin Motion 1 for judgment that the Pastorio claims are unpatentable under 35
`
`USC 112, ¶2. (Levin Motion 1, Paper 52).
`
`
`
`1
`Any reference to a statute in this Decision is to the statute that was in effect on March 15,
`2013 unless otherwise indicated. See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
`2
`
`
`
`

`

`2. Levin Motion 2 to add a claim to its involved application. (Levin Motion 2,
`
`Paper 63). This motion is said to be responsive to, and contingent on, the grant
`
`of Pastorio Motion 1 for a judgment on no interference-in-fact.
`
`3. Levin Miscellaneous Motion 3 to exclude Pastorio Exhibit 2018. (Levin
`
`Motion 3, Paper 130).
`
`We deny Pastorio Motion 1 and Levin Motion 1. We grant Pastorio
`
`Motion 2. We dismiss as moot Levin Motion 2 and Pastorio Motion 3. We deny
`
`Levin Motion 3.
`
`
`
`II.
`
`Findings of Fact
`
`The record supports the following findings of fact, as well as any other
`
`findings of fact set forth in this Decision, by a preponderance of the evidence.
`
`The parties
`
`1.
`
`The interference was declared on 6 February 2014 between junior party
`
`Pastorio and senior party Levin. (Declaration, Paper 1).
`
`2.
`
`The involved Pastorio patent is 8,304,559, issued on 6 November 2012 from
`
`application 13/498,245, filed 26 March 2012.
`
`3.
`
`Pastorio identifies its real party in interest as Finchimica S.p.A. (Pastorio
`
`Notice of Real Party in Interest, Paper 8).
`
`4.
`
`5.
`
`The involved Levin application is 13/926,389, filed 25 June 2013.
`
`Levin identifies its real party in interest as Makhteshim Chemical Works
`
`Ltd. (Levin Notice of Real Party in Interest, Paper 6).
`
`
`
`3
`
`

`

`6.
`
`Count 1 is the only count of the interference and is as follows:
`
`The Count and claims
`
`Claim 14 of Pastorio (8,304,559)
`or
`Claim 2 of Levin (13/926,389)
`
`7.
`
`Count 1 generally is directed to a method of making compounds, such as the
`
`insecticidal compound fipronil,2 by oxidation of the following compound in the
`
`presence of dichloroacetic acid, an oxidizing agent, and a strong acid:
`
`
`
`
`
`
`
`wherein the oxidation is conducted in the absence of trichloroacetic acid and/or
`
`trichloroperacetic acid. (Declaration at 4).
`
`8.
`
`Pastorio claims 1-15 were designated as corresponding to Count 1.
`
`(Declaration at 4).
`
`9.
`
`Levin claims 1-10 were designated as corresponding to Count 1.
`
`(Declaration at 4).
`
`
`
`Pastorio claim 14, now disclaimed, encompasses compounds other than fipronil.
`4
`
`2
`
`
`
`

`

`10. Thereafter Pastorio statutorily disclaimed claims 13-15 of its involved patent
`
`such that now only its claims 1-12 are involved in the interference. (Disclaimer,
`
`Paper 26).
`
`11. Pastorio claims 1-12 differ from Count 1 in at least that these claims do not
`
`require a strong acid.
`
`12. Claim 1 of Pastorio is as follows:
`
`
`
`
`
`A method for the preparation of the compound having the following
`general formula (I):
`
`
`
`
`
`
`
`
`
`
`wherein R1 and R2 are independently hydrogen or halogen; through
`oxidation of a compound having the general formula (II) in the
`presence of dichloroacetic acid and of an oxidising agent:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`wherein R1 and R2 are defined as above, where the oxidising agent is
`selected from the group comprising benzoyl peroxides, sodium
`peroxides, t-butyl peroxides and/or hydrogen peroxide, and wherein
`the oxidation is conducted in the absence of trichloroacetic and/or
`trichloroperacetic acid.
`
`
`
`5
`
`

`

`
`
`(Pastorio Clean Copy of Claims, Paper 11).
`
`13. All the Levin involved claims, like the Count, require a strong acid, and in
`
`particular, sulfuric acid.
`
`14. Levin Claim 1 is as follows:
`
`1. A method for the preparation of the compound having the following
`general formula (I):
`
`
`
`
`
`wherein R1 and R2 are chlorine; through oxidation of a compound
`having the general formula (II) in the presence of dichloroacetic acid,
`of an oxidizing agent, and of a strong acid:
`
`
`
`
`
`wherein R1 and R2are defined as above, where the oxidizing agent is
`hydrogen peroxide, and where the strong acid is sulfuric acid.
`
`(Levin Clean Copy of Claims, Paper 4).
`
`
`
`6
`
`

`

`15. Levin claim 2 depends from Levin claim 1 and specifies that the oxidation is
`
`conducted in the absence of trichloroacetic acid and/or trichloroperacetic acid.
`
`(Levin Clean Copy of Claims).
`
`
`
`
`16. Pastorio was accorded priority benefit of the following for Count 1:
`
`Priority Benefit
`
`PCT/IB2011/052304, filed 26 May 2011
`
`17. Levin was accorded priority benefit of the following for Count 1:
`
`US13/809,327, filed 14 March 2013
`
`PCT/IL/2011/000546, filed 10 July 2011
`
`US 61/363,366, filed 12 July 2010.
`
`(Redeclaration, Paper 15, at 2).
`
`Testimony
`
`18. Dr. Barry Trost has provided testimony of behalf of Pastorio. (Trost
`
`Declaration, Ex 2003, Trost Second Declaration, Ex 2018).
`
`19. Based on his education and professional experience (see Trost Declaration at
`
`¶¶ 2-6 and curriculum vitae, Ex 2004) we determine that Dr. Trost is qualified to
`
`testify about issues relevant to the interference.
`
`20. Dr. Gordon Gribble has provided testimony on behalf of Levin. (Gribble
`
`Declaration, Ex. 1001, Gribble Second Declaration, Ex 1013, Gribble Third
`
`Declaration, Ex 1018, and Gribble Fourth Declaration, Ex 1022).
`
`21. Based on his education and professional experience (see Gribble Declaration
`
`at 2-4 and curriculum vitae, Ex 1002) we determine Dr. Gribble is qualified to
`
`testify about issues relevant to the interference.
`
`
`
`7
`
`

`

`III.
`
` Discussion
`
`The Board may take up motions for decision in any order that is appropriate
`
`to secure the just, speedy, and inexpensive determination of the proceeding. Bd. R.
`
`125(a). Pastorio Motion 1 presents the threshold issue of whether there is an
`
`interference-in-fact. The Motion presents a threshold issue in that, if there is no
`
`interference-in-fact, there is no basis upon which to continue the interference. Bd.
`
`R. 201. Accordingly, we exercise our discretion to consider Pastorio Motion 1
`
`prior to turning to any other motion before us. As with all motions, the party filing
`
`the motion has the burden of proof to establish that it is entitled to the requested
`
`relief. Bd. R. 121(b). To be sufficient a motion must provide a showing, supported
`
`with appropriate evidence, such that, if unrebutted, would justify the relief sought.
`
`Bd. R. 208(b).
`
`Pastorio Motion 1 (for judgment of no interference-in-fact)
`
`Determining whether an interference-in-fact exists requires a two way
`
`inquiry. That is, for an interference-in-fact to exist the subject matter of a claim of
`
`one party, taken as prior art, must have anticipated or rendered obvious the subject
`
`matter of a claim of the other party and vice-versa. Bd. R. 203(a). As the moving
`
`party, Pastorio has the burden of showing that there is no interference-in-fact
`
`between any of the Pastorio claims3 and any of the Levin claims. Bd. R. 121(b).
`
`In its Motion, Pastorio argues that the two way test is not met since the
`
`Levin claims, which require a strong acid, would not have been rendered obvious
`
`by the remaining Pastorio claims which do not require a strong acid. Pastorio does
`
`not argue a lack of anticipation or obviousness in the other direction.
`
`
`
`Because Pastorio has statutorily disclaimed its claims 13-15 (see Finding of Fact 10) we
`3
`do not consider whether these claims interfere-in-fact with any Levin claim.
`8
`
`
`
`

`

`In this case, Pastorio has the burden of proving a negative, i.e., that the
`
`addition of a strong acid, e.g., sulfuric acid, would not have been obvious. As
`
`noted in the Standing Order, “[p]roving that subject matter is not obvious may
`
`require a negative proof: that no prior art in combination with the subject matter of
`
`the count[4] could render the claimed subject matter obvious.” The Standing Order
`
`goes on to state that “[a] party may be able to satisfy its burden of production with
`
`testimony from a knowledgeable witness certifying that there is no known prior art
`
`that would have overcome the differences between the subject matter of the count
`
`and the subject matter of the claim and that the differences were not merely routine
`
`or conventional in the art.” (Standing Order, Paper 2, at ¶ 208.1).
`
`Here Pastorio does not seem to dispute that the use of a strong acid, e.g.,
`
`sulfuric acid, was conventional in the art for the purpose of speeding up chemical
`
`reactions. (See Transcript of Trost , Ex 1017, at 46:22-24 )(“The use of sulfuric
`
`acid or the use of acids to speed up chemical reactions is known for many kinds of
`
`reactions.”). Instead Pastorio argues the addition of the strong acid yields an
`
`unexpected result such that the addition would not have been obvious. According
`
`to Pastorio there was sufficient unpredictability of the claimed chemical process
`
`that a person of ordinary skill in the art would not have expected the high level of
`
`selectivity5 demonstrated at Example 3 of its involved patent. (Pastorio Motion 1
`
`at 8:9-9:3, citing the Pastorio involved patent, Ex 2001, at 7:66-8:1 and Trost
`
`Declaration at ¶ 38).
`
`
`
`Here the relevant inquiry is focused on the claims of the parties and not the Count but the
`4
`burden of proving a negative is the same.
`We understand “selectivity” here to be formation of the desired compound of “formula I”
`5
`(sulfoxide, e.g., fipronil), over the formation of the by-product compound of “formula III”
`(sulfone) (Pastorio Motion 1 at 4:11-17, referring to Pastorio involved patent at 5:1-22)
`9
`
`
`
`

`

`Pastorio argues that it was known that many “of reagents available for the
`
`oxidation of sulfides….cause over-oxidation to sulfones” such that “the conditions
`
`of the reaction” including “time, temperature, and the relative amount of oxidants,
`
`have to be controlled to avoid forming side products of oxidation.” (Pastorio
`
`Motion 1 at 7:13-20, citing Kaczorowska, Ex 2005,6 at 8315). Pastorio points to
`
`the declaration testimony of Dr. Trost indicating that the addition of a strong acid,
`
`such as the sulfuric acid required by the Levin involved claims, would cause the
`
`dichloroperacetic acid of the claimed reaction to become a considerably stronger
`
`oxidizing agent. (Trost Declaration at ¶ 37). Because of this, Pastorio argues, one
`
`skilled in the art could not “have predicted whether the strong acid would cause an
`
`over-oxidation of the desired sulfoxide to the undesired sulfone.” (Pastorio Motion
`
`1 at 8:9-16).
`
`In support of its position that there is unexpectedly high selectivity upon
`
`addition of a strong acid such as sulfuric acid, Pastorio and Dr. Trost’s testimony
`
`direct us to Example 3 of the Pastorio involved patent. The Example is said to
`
`show a nearly seven-fold increase in the rate of the reaction with no negative effect
`
`on selectivity. (Pastorio Motion 1 at 8:9-8, citing the Pastorio involved patent, Ex
`
`2001, at 7:66-8:1 and Trost Declaration at ¶ 38).
`
`As noted in the Standing Order at ¶ 152.2.1:
`
`A specification of an involved application or patent is admissible as
`evidence only to prove what the specification or patent describes. If
`there is data in the specification upon which a party intends to rely to
`prove the truth of the data, an affidavit by an individual having first-
`hand knowledge of how the data was generated (e.g., the individual
`who performed an experiment reported as an example in the
`specification) must be filed. This individual may be cross examined.
`
`
`
`Kaczorowska et al, Tetraheddron 2005, 61:8315-8327.
`10
`
`6
`
`
`
`

`

`(See also Bd. R. 158(a) and (b)).
`
`Pastorio does not direct us to testimony from an individual having
`
`knowledge of how the data found in the Pastorio involved patent was generated.
`
`Dr. Trost testified that he does “not have personal knowledge that the example 1,
`
`example 2, and example 3…were performed as stated.” (Levin Opposition 1 at
`
`6:16-18, citing to Transcript of Trost at 16:7-9.) Without such testimony, the data
`
`presented in Example 3, or any of the other examples, is not sufficient to show that
`
`the results described were actually obtained. Furthermore, without such testimony,
`
`Levin is deprived of an opportunity to cross-examine a person having first-hand
`
`knowledge of how the data was generated. Accordingly, Example 3, without more,
`
`does not convince us of unexpected results.
`
`Dr. Trost testifies that he considered “the level of ordinary skill in the art and
`
`the scope and content of the prior art in the time frame of …the claimed priority
`
`date of the Levin patent application.” (Trost Declaration at ¶ 22). However, as
`
`pointed out by Levin, Dr. Trost appears not to have considered a reference of
`
`record in the Levin application, i.e., CN 101250158A (the CN ’158 reference , Ex
`
`1016 and Ex 1026 as submitted with English translation) (Trost Transcript, Ex
`
`1017, at 70:10-72:24 and 75:10-19 (indicating that Dr. Trost did not consider the
`
`CN ’158 reference but “considered only the documents identified in [his]
`
`declaration and “did not make any further search” of the prior art).7 The CN ’158
`
`reference appears to describe a method of producing fipronil through catalytic
`
`oxidation in the presence of a solvent and sulfuric acid. (CN ’158 application at 1).
`
`The testimony of Dr. Trost is lacking for at least the reason that it fails to address
`
`
`
`According to Levin the CN ’158 reference was filed in Levin’s involved application as
`7
`part of a Third Party Submission under 37 C.F.R. § 1.290. (Levin Opposition 1 at fn1).
`11
`
`
`
`

`

`relevant prior art of record in an involved application.8 Dr. Trost’s indication that
`
`he “did not make any further search” of the prior art further diminishes the value of
`
`his testimony.
`
`Pastorio also argues that the Levin claims would not have been obvious over
`
`its remaining claims since the prior art taught away from the use of a strong acid
`
`due to concerns that its use would result in a lower yield of the desired product
`
`because of acid-mediated degradation or unwanted side reactions of the precursor
`
`and target compounds. Pastorio directs us to WO 2007/122440 (Gharda, Ex 2009,
`
`at 5) (“Mineral acids are generally not useful as a medium for oxidation due to the
`
`instability of the compounds of the invention towards strong mineral
`
`acids.”) cited in the involved Levin application (Ex 2002 at ¶ 9), as indicating that
`
`the compounds of Formulas I and II are unstable towards strong mineral acids.
`
`(Pastorio Motion 1 at 9:5-13 and Trost Declaration at ¶¶ 40-45, also discussing Exs
`
`2006-2008, to Oda9, Kenney10 and March11, respectively).
`
`In it Opposition Levin argues that Gharda does not teach away from the use
`
`of a sulfuric acid catalyst. First Levin, relying upon the testimony of Dr. Gribble,
`
`notes that Gharda refers generally to strong mineral acids and not the claimed
`
`
`
`In its Reply 1, Pastorio argues that CN ’158 lacks relevance because it uses a different
`8
`solvent such that a biphasic system is disclosed. (Pastorio Reply 1 at 2:3-8). Pastorio does not
`direct us to testimony as to how one skilled in the art would have regarded this difference and we
`are unconvinced that CN ’158 is not relevant prior art to the obviousness inquiry. Moreover, we
`are not convinced that consideration of the CN ’158 should not have been part of a prima facie
`showing.
`Oda et al., “Some Researches on the Chemistry of Dimethyl Sulfoxide and Related
`9
`Compounds,” Bull. Inst. Chem. Res., Kyoto Univ., 47(5): 480-521 (1970).
`Kenney et al., “An Acid-catalyzed Cleavage of Sulfoxides,” J. Am. Chem. Soc.,
`10
`83: 4019-4022 (1961).
`11 March, Advanced Organic Chemistry: Reactions, Mechanisms, and
`Structure (Fourth Ed. 1992) at pp. 887-888, 1236.
`12
`
`
`
`

`

`sulfuric acid in particular. Further Levin argues that discouraging the use of a
`
`strong sulfuric acid as a “medium” does not speak to the use of such an acid in a
`
`catalytic amount.12 (Levin Opposition 1 referring to Third Gribble Declaration at
`
`¶ 37). Levin also points to the more specific teaching of the CN ’158 reference
`
`which teaches a method of producing fipronil through catalytic oxidation in the
`
`presence of a solvent and sulfuric acid in particular. (Levin Opposition 1 at 17:9-
`
`17 referring to Third Gribble Declaration at ¶ 39).
`
`The testimony of Dr. Trost does not indicate that he considered CN ’158 in
`
`forming his opinion of a teaching way.13 Instead Dr. Trost relied upon the teaching
`
`of WO ’440 that mineral acids are generally not useful as a medium for oxidation
`
`due to the instability of the compounds of the invention towards strong mineral
`
`acids. (Trost Declaration at ¶¶ 31 and 40) The later teaching of CN ’158 is directed
`
`specifically to the acid claimed by Levin, i.e., sulfuric acid, while the earlier
`
`published WO ’440 teaching is more general to “strong mineral acids”. We are not
`
`persuaded that Pastorio has shown a teaching away of the use of sulfuric acid in the
`
`claimed reaction given the prior art cited and the other evidence before us. In this
`
`regard we find convincing the testimony of Dr. Gribble that “[a] person having
`
`ordinary skill in the art weighing the generic disclosure of the ‘440 PCT
`
`application [Gharda] against the specific disclosure of the ‘158 CN application
`
`
`
`The Levin specification states that “[t]he strong acid is generally present in an amount
`12
`effective to catalyze the oxidation.” (Levin involved application, Ex 2002, at ¶ 26).
`13
`In his Second Declaration, Dr. Trost indicated that he “ has since reviewed [CN ’158],
`and it does not change my opinions regarding the concerns a person of skill in the art would have
`had with using sulfuric acid in a process of making fipronil”. (Second Declaration of Trost at ¶
`24). However, as noted below in the discussion of Levin Miscellaneous Motion 3, Pastorio does
`not rely upon this portion of the Second Trost Declaration in its Reply 1. Thus, we have not
`considered this testimony or whether it could be properly presented as Reply evidence.
`
`
`
`
`13
`
`

`

`would not have been dissuaded from using sulfuric acid in a process for oxidizing
`
`a compound of formula (II) to Fipronil because the ‘158 CN application
`
`affirmatively taught using sulfuric acid in a process for making Fipronil.” (Third
`
`Declaration of Gribble at ¶ 39).
`
`In Reply, Pastorio argues that CN ’158 also would have taught away from
`
`the use of a strong acid because its yields, which were described therein as “high”,
`
`were actually poor in that 20 to 33% of the starting material was lost. (Pastorio
`
`Reply 1 at 2:13-18). Pastorio does not support its characterization of the yields by
`
`providing evidence that one skilled in the art would have considered the yield to be
`
`“poor”. Even if Pastorio is correct in its characterization of the yields, Pastorio has
`
`not shown why this amounts to a teaching away instead of a teaching that sulfuric
`
`acid may be used in producing Fipronil, even if yields are less than ideal. See In re
`
`Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A known or obvious composition does
`
`not become patentable simply because it has been described as somewhat inferior
`
`to some other product for the same use.”)
`
`Pastorio has not met its burden of proof to show that the subject matter of
`
`the involved Levin claims would not have been obvious over the subject matter of
`
`the remaining Pastorio claims. Pastorio Motion 1 is denied.
`
`Levin Motion 1(for judgment of unpatentability under 35 USC 112, ¶2)
`
`In its Motion 1, Levin moves for judgment on the basis that the remaining
`
`Pastorio claims are “unpatentable under 35 U.S.C. § 112, ¶2, because (1) the
`
`meaning of ‘where the oxidising agent is selected from the group comprising
`
`benzoyl peroxides, sodium peroxides, t-butyl peroxides and/or hydrogen peroxide’
`
`recited by Pastorio claim 1 (the “oxidizing agent clause”) is uncertain
`
`and (2) the meaning of ‘in the presence of’ recited by Pastorio claim 1 is uncertain,
`
`
`
`14
`
`

`

`making it impossible to determine the scope of Pastorio’s claims with reasonable
`
`certainty.” (Levin Motion 1 at 1:20-2:5). Levin asks that the “motion be
`
`designated as a threshold motion because granting this motion would deprive
`
`Pastorio of standing in the interference”. (Levin Motion 1 at 1:4-7, citing Bd. R.
`
`201 )(“Threshold issue means an issue that, if resolved in favor of the movant,
`
`would deprive the opponent of standing in the interference.”). Unpatentability
`
`based on indefiniteness under 35 U.S.C. § 112, ¶2, is not one of the examples of a
`
`threshold issue listed in Bd. R. 201. Because we deny Levin Motion 1, we need
`
`not and do not decide if it presents a threshold issue.
`
`Levin first argues that the language “where the oxidising agent is selected
`
`from the group comprising benzoyl peroxides, sodium peroxides, t-butyl peroxides
`
`and/or hydrogen peroxide, and wherein the oxidation is conducted in the absence
`
`of trichloroacetic and/or trichloroperacetic acid”, found in Pastorio claim 1, from
`
`which all the other remaining involved Pastorio claims depend either directly or
`
`indirectly, renders the claims indefinite. (Claim 1, Pastorio Clean Copy of Claims,
`
`contested language underlined).
`
`Levin argues that as the phrase “selected from the group comprising” is open
`
`ended making it impossible to determine the members of “the group” from which a
`
`claim element must be “selected.” (Levin Motion 1 at 5:12-6:5). Levin argues that
`
`“the oxidizing agent clause in the ‘559 patent’s claims is not a proper Markush
`
`group because ‘comprising’ makes the members of the ‘group’ from which the
`
`oxidizing agent must be ‘selected’ uncertain.” (Levin Motion 1 at 7:5-7).
`
`
`
`In its Opposition Pastorio argues that claim 1 does not contain a Markush
`
`group for at least the reason that the claim is not closed but is open with respect to
`
`suitable oxidizing agents. Pastorio argues that the claim is not unclear because it
`
`
`
`15
`
`

`

`requires an oxidizing agent and provides an exemplary list of suitable oxidizing
`
`agents in the claim. (Pastorio Opposition 1 at 5:10-14 and 6:6-9).
`
`The second paragraph of 35 USC § 112 requires that the claims particularly
`
`point out and distinctly claim the subject matter which the applicant regards as his
`
`invention. 35 USC 112, ¶ 2. The claims must reasonably set forth the metes and
`
`bounds of the claimed invention such that one of ordinary skill in the art would
`
`understand the scope of the invention that is being protected. The definiteness of
`
`the claims is considered in view of the specification and from the perspective of
`
`one skilled in the art. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1217
`
`(Fed. Cir. 1991) (“A decision as to whether a claim is invalid under this provision
`
`requires a determination whether those skilled in the art would understand what is
`
`claimed.”); Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d
`
`696, 705 (Fed. Cir. 1998) (“Determining whether a claim is definite requires an
`
`analysis of ‘whether one skilled in the art would understand the bounds of the
`
`claim when read in light of the specification.... If the claims read in light of the
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`specification reasonably apprise those skilled in the art of the scope of the
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`invention, § 112 demands no more.”’, citing Miles Lab., Inc. v. Shandon, Inc., 997
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`F.2d 870, 875, (Fed. Cir. 1993).)
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`We agree with the parties that the phrase “where the oxidising agent is
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`selected from the group comprising” does not use the closed language that is
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`typical of language used to define a Markush group. “Comprising” is an open
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`phrase and therefore opens the group to oxidizing agents other than those listed in
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`the claim. AFG Industries, Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239,
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`1245(Fed. Cir. 2001) (citations omitted). (“We have consistently held that the word
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`‘comprising’ is an open transition phrase.”).
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`16
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`Levin argues that “[i]n the absence of any guidance in the specification, a
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`person having ordinary skill in the art would not have been able to determine
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`which of the oxidizing agents known in the art are within the scope of the ‘group’
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`recited by Pastorio claim 1 and which are not.” (Motion at 8:7-10, citing Gribble
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`Declaration at ¶ 17). However, Pastorio’s specification provides guidance by
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`naming the same oxidizing agents found in the claims as well as others that may be
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`used in conjunction with, or instead of, those listed in the claim. (’559, Ex 2001, at
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`e.g., 5:37-40 and 8:59-61). Levin’s argument seem to be that because the “group”
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`is broad enough to include other oxidizing agents not named in the claim then the
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`claim is indefinite. The record indicates though that one skilled in the art would
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`have understood the meaning of “oxidizing agent” in context of the Pastorio
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`claims. (See, e.g., Second Trost Declaration, Ex 2018, at ¶¶ 19 and 20 and
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`Transcript of Gribble at 84:24-85:3). Levin has not explained why one skilled in
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`the art would have considered the scope of the claims to be indefinite given this
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`understanding and the guidance of the Pastorio specification. While we agree that
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`use of “comprising” rather than “consisting of” results in a broader claim, “breadth
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`is not to be equated with indefiniteness”. In re Miller, 441 F.2d 689, 693 (CCPA
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`1971).
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`
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`In support of its positon that the “group comprising” phrase renders the
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`Pastorio claims indefinite Levin cites, inter alia, Lexington Luminance LLC v.
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`Amazon.com, Inc., 6 F.Supp.3d 179 (D. Mass. 2014) in which a claim that used the
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`phrase was held to be indefinite. However, on appeal it was held that the “district
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`court erred in finding the claim to be indefinite because of the imperfect usage of
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`Markush terminology.” Lexington Luminance LLC v. Amazon.com, Inc., 601
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`Fed.Appx. 963, 969 (Fed. Cir. 2015). On appeal the Court reasoned that
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`
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`17
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`“[d]efiniteness involves more than an examination of the technical correctness of
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`the use of a Markush expression that may have slipped past the examining process
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`[and] involves evaluation of the claim in light of the written description.” The
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`Court concluded the meaning of the contested claim language was “reasonably
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`ascertainable.” Lexington Luminance at 968-969.
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`
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`While the Court’s decision in Lexington Luminance was in the context of
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`validity and not patentability of the claim as is before us, it does not support a per
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`se rule that the “group comprising” language results in indefiniteness. Levin has
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`not otherwise provided sufficient reason why the language renders the claims
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`indefinite. Accordingly, we are not persuaded that the Pastorio involved claims are
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`indefinite on this basis.
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`
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`Levin also argues that the use of “and/or” in the listing of the group of
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`oxidizing agents renders the claim indefinite because the language “leads to
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`different possible groups, not a single group” and thus “further confounds any
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`attempt to determine the scope of ‘the group’ from which the oxidizing agent must
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`be selected.” (Levin Motion 1 at 9:3-7). Pastorio argues that Levin’s position “is
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`premised on the mistaken view that Pastorio claim 1 contains a Markush group....”
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`(Pastorio Opposition 10:12-13). Pastorio argues that even in the context of a
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`Markush grouping it is appropriate to use “and/or” where one or more members
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`may be selected. (Pastorio Opposition at 10:15-24).
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`The groups that result from the “and/or” language is a group that comprises
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`all of the listed oxidizing agents and a group that comprises any one of the listed
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`oxidizing agents. Levin concedes that there is no per se rule that the use of
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`“and/or” in a claim results in indefiniteness. (Levin Motion 1 at 8:17-19). Levin’s
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`arguments instead are directed toward the notion that the breadth of the claims that
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`18
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`results from the “and/or” language makes them indefinite. (See, e.g., Levin
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`Motion 1 at 9:8-10:5, citing Gribble Declaration at ¶¶ 18-19). However, as we
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`noted above, breadth alone does not equate to indefiniteness. Further, we credit
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`the testimony of Dr. Trost that, from the perspective of one skilled in the art and in
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`view of the specification, the claim is not unclear because it requires that one or
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`more oxidizing agents be used in the claimed process. (Second Trost Declaration,
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`at ¶ 21, citing the ’559 application at 8:59-61 which states that “the peroxides
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`illustrated earlier may be replaced or used in conjunction with a peracid and/or a
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`persulphate”).
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`Finally Levin argues that the claim 1 requirement that the oxidation of the
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`compound of formula II occur “in the presence of” dichloracetic acid and an
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`oxidizing agent renders the Pastorio claims indefinite because dependent claim 514
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`requires that the oxidation occur “in situ”. Levin argues that the ’559 specification
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`does not define “in the presence of” or “in situ”, that Dr. Trost, in his testimony
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`treats the two synonymously, and that Dr. Gribble testifies that the two are used
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`interchangeably in the art. Levin argues that the doctrine of claim differentiation
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`requires that a dependent claim, here claim 5 (“in situ”), be of different scope than
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`the claim(s) from which it depends, here claims 1 and 4 (“in the presence of”).
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`(Levin Motion 1 at 11:1-13:16).
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`Assuming there is a lack of claim differentiation, Levin does not explain
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`why indefiniteness of any particular claim results.15 Levin argues that “[b]ecause a
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`
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`Claim 5 depends from claim 4 which depends from claim 1. (Pastorio Clean Copy of
`14
`Claims).
`15
`As noted by Pastorio in its Opposition, a lack of claim differentiation raises an issue
`under the fourth, not the second, paragraph of 35 USC ¶ 112. (Pastorio Opposition 1 at 13:11-
`16).
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`
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`19
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`person having ordinary skill in the art could not have determined whether ‘in the
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`presence of’ recited in Pastorio claim 1 means something different than ‘in situ,’
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`Pastorio claims 1-12 are indefinite.” (Levin Motion 1 at 13:14-16). Levin does
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`not argue that one skilled in the art would have considered the phrase “in the
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`presence of” to render the claims indefinite but instead indicates that its own
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`witness Dr. Gribble, as well as Pastorio witness Dr. Trost, consider the phrase to be
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`interchangeable in the art with “in situ”. (Levin Motion 1 at 13:6-12). Thus, Levin
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`has not shown the Pastorio claims to be indefinite on the basis of the phrase “in the
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`presence of.”
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`Further, in