Trials@uspto.gov
`571-272-7822
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`Paper No. 17
` Filed: July 22, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ADAMA MAKHTESHIM LTD.,
`Petitioner
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`v.
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`FINCHIMICA S.P.A.,
`Patent Owner.
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`Case IPR2016-00577
`Patent 8,304,559 B2
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`Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and
`DEBORAH KATZ, Administrative Patent Judges.
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`LANE, Administrative Patent Judge.
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`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(a)
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`IPR2016-00577
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`Patent 8,304,559
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`I.
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`Introduction
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`The Board ordered institution of inter partes review of claims 1–12 of
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`Patent 8,304,559 (’559) on Petitioner’s asserted ground 1 that these claims are
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`unpatentable under 35 U.S.C. § 103(a) as obvious over EP 0295117 B
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`(’EP 117) in view of WO 2007/122440 A1 (Gharda) and further in view of
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`CN 101250158 A (CN ’158) for claims 11 and 12 only. We did not institute
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`on the other grounds asserted by Petitioner, i.e., grounds 2-4. (Paper 7,
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`Decision, entered 24 May 2016, at 17).
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` Patent Owner requested “partial rehearing” of the Decision. (Paper 9,
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`Patent Owner Request, at 1). We considered the Patent Owner Request but
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`did not modify the Decision. (Paper 11, Decision on Rehearing, at 6).
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`Petitioner too has requested “partial rehearing” of the Decision.
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`(Paper 10, Petitioner Request). In the Petitioner Request, Petitioner asks that
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`we modify the Decision and also institute inter partes review of claims 1–12
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`of the ’559 patent on the basis of ground 3 raised in its petition, i.e., on the
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`basis that claims 1–12 of the ’559 Patent are unpatentable under 35 U.S.C.
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`§ 103(a) as obvious over EP ’117 in view of US Patent 6,013,761 (Zierer),
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`and further in view of CN ’158 for claims 11 and 12 only. (Petitioner Request
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`at 1). We have considered the Petitioner Request as further discussed below
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`but do not modify the Decision at this time. Upon review of other briefing yet
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`to be filed, including any Patent Owner Response, we may revisit the
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`Petitioner Request if it becomes necessary and appropriate to do so.
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`II. Background
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`In our Decision, we noted Petitioner’s indication that the ground 3
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`challenge relied on the Board accepting the construction of “in the presence
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`of [DCA]” that was advanced by Patent Owner in Interference 105,995, an
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`interference that involved the same parties. In the interference, Patent
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`2
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`IPR2016-00577
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`Patent 8,304,559
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`Owner urged a claim construction that would require that DCA, in
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`combination with an oxidizing agent such as hydrogen peroxide, reacts to
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`form the oxidizing agent dichloroperacetic acid (DCPA) which in turn acts
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`as an oxidant for the conversion of the compound of formula II to fipronil.
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`(Paper 2, Pet., at 13, citing, e.g., Interference 105,995, Paper 227 (Ex 1035),
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`Levin Opposition 4 at 4:5–5:8). In the Interference, the construction
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`advanced by Patent Owner was not accepted by the Board. (Interference
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`105,995, Paper 259 (Ex 2002), Decision on Priority and Other Motions at
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`16 and Paper 271, Decision on Rehearing at 3–4).
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`We stated in the Decision that “[w]e do not accept the construction
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`urged by Patent Owner during the 105,995 Interference and instead
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`conclude, consistent with our decision in the interference, that the claims do
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`not require that DCA perform any particular function. (Decision at 16,
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`citing to Interference 105,995, Paper 259 (Ex. 2002), Decision on Priority
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`and Other Motions at 16 and Paper 271, Decision on Rehearing, at 3–4). We
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`noted that “[t]his third ground only adds to ground 1 if the Board accepts
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`the construction urged by Patent Owner during the Interference [and that]
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`[a]s we do not accept this construction, we determine that ground 3 is
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`unnecessary and redundant to ground 1.” (Decision at 16-17).
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`In its Request, Petitioner notes that the Decision states that the Board
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`has “not yet made a final determination of . . . the construction of any claim
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`term” and that “Patent Owner has not yet indicated that it will not argue
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`against the construction of ‘in the presence of [DCA]’ used by the Board in
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`the Decision”. Thus, Petitioner argues, the Board should proceed with
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`ground 3 since a final claim construction that is contrary to the non-final
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`construction set forth in the Decision may result in ground 3 no longer being
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`unnecessary and redundant to ground 1. (Petitioner Request at 3-4, citing to
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`Decision at 17:6-7).
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`Further the Petitioner argues that “the Board has misapprehended or
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`IPR2016-00577
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`Patent 8,304,559
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`overlooked the possibility of later changes to the claim construction, and/or
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`the prejudice to Petitioner if such changes occur” citing Cuozzo Speed
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`Technologies, LLC v. Lee, 136 S.Ct. 890 (Jan. 15, 2016) (granting certiorari as
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`to whether “the Board may construe claims in an issued patent according to
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`their broadest reasonable interpretation rather than their plain and ordinary
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`meaning”). (Petitioner Request at 5-6).
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`III. Discussion
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`As Petitioner points out the claim construction set forth in the Decision
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`was not a final determination by the Board. If the Patent Owner, in its
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`Response or other briefing, argues for the claim construction it urged in
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`Interference 105,995 for “in the presence of [DCA]” and if the Board,
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`contrary to the conclusion reached in the interference, accepts the Patent
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`Owner’s construction, then there may be a need to revisit whether we also
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`should institute inter partes review of claims 1-12 of the ’559 patent on the
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`basis of ground 3. Accordingly, while we do not modify our Decision at this
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`time by instituting review on the basis of ground 3, we may do so later if our
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`final conclusions regarding claim construction make it necessary and
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`appropriate to do so.
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`Petitioner’s argument regarding a possible change in the claim
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`construction standard is not persuasive. Subsequent to the Petitioner Request
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`the propriety of the claim construction standard used in the Decision, i.e., the
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`broadest reasonable construction standard, was confirmed by the Supreme
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`Court. Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131, 2144-2145
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`4
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`(2016).
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`IPR2016-00577
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`Patent 8,304,559
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`IV. Order
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`It is
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`ORDERED that the Decision instituting inter partes review of
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`claims 1-12 of Patent 8,304,559 B2 (Paper 7, Decision) is not modified at this
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`time.
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`PETITIONER:
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`Gary Gershik
`ggershik@cooperdunham.com
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`Norman Zivin
`nzivin@cooperdunham.com
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`PATENT OWNER:
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`Edward Figg
`efigg@rfem.com
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`Robert Huntington
`dhuntington@rothwellfigg.com
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`5