UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Bayer Cropscience LP
`
`Petitioner
`
`v.
`
`Syngenta Limited and Syngenta Crop Protection LLC
`
`Patent Owners
`
`
`
`
`
`
`
`Case No. IPR2017-01332
`
`U.S. Patent No. 8,404,618
`
`
`
`PATENT OWNER’S OPPOSITION TO REQUEST FOR REHEARING
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Bayer Cropscience LP
`
`Petitioner
`
`v.
`
`Syngenta Limited and Syngenta Crop Protection LLC
`
`Patent Owners
`
`
`
`
`
`
`
`Case No. IPR2017-01332
`
`U.S. Patent No. 8,404,618
`
`
`
`PATENT OWNER’S OPPOSITION TO REQUEST FOR REHEARING
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`II.
`
`B.
`C.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`PETITIONER’S ARGUMENT REGARDING THE IDENTITY OF
`KIH-485 IS NEW AND FAILS IN ANY EVENT ......................................... 2
`A.
`Petitioner improperly introduced a new inherency argument in
`its Request for Rehearing ...................................................................... 2
`Petitioner’s newly-cited case law does not support institution ............. 2
`B.
`Schering confirms that Polge cannot anticipate the ‘618 patent ........... 6
`C.
`III. PETITIONER’S NEW TAKAHASHI GROUNDS ARE IMPROPER
`AND SHOULD BE DENIED IN ANY EVENT ............................................ 7
`A.
`Petitioner’s grounds that cite Takahashi but NOT Owen are
`new ........................................................................................................ 7
`Petitioner’s reliance on MPEP § 1207.03(a)(II) is misplaced .............. 9
`Even if presented in a timely manner, Petitioner’s new
`Takahashi grounds should be denied under 35 U.S.C. § 325(d) ........... 9
`IV. PETITIONER’S REPEATED ATTEMPTS TO SHIFT ITS BURDEN
`TO PATENT OWNER SHOULD BE REJECTED ...................................... 10
`CONCLUSION .............................................................................................. 10
`
`V.
`
`
`
`
`
`
`
`
`ii
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`
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`
`
`TABLE OF AUTHORITIES
`
`Cases
`Captioncall, Inc. v. Ultratec, Inc.,
`IPR2014-00780, Paper No. 40 (P.T.A.B. May 19, 2016) ...................................... 8
`
`Ex Parte Desai,
`No. 2013-009767, 2016 WL 3947770 (P.T.A.B. 2016). .............................. 2, 5, 6
`In re Hogan,
`559 F.2d 595 (C.C.P.A. 1977) .................................................................. 2, 3, 4, 5
`In re Wilson,
`311 F.2d 266 (C.C.P.A. 1962) .................................................................. 2, 3, 4, 6
`Schering Corp. v. Geneva Pharm. Inc.,
`339 F.3d 1373 (Fed. Cir. 2003) ..................................................................... 2, 6, 7
`
`Statutes
`35 U.S.C. § 112 .......................................................................................................... 5
`35 U.S.C. § 325(d) .......................................................................................... 1, 9, 10
`
`Rules & Regulations
`37 C.F.R. § 41 ............................................................................................................ 9
`37 C.F.R. § 41.39(a)(2) .............................................................................................. 9
`37 C.F.R. § 42 ............................................................................................................ 9
`37 C.F.R. § 42.71(d) ..............................................................................................2, 7
`
`Other Authorities
`MPEP § 1207 ............................................................................................................. 9
`MPEP § 1207.03(a)(II) .............................................................................................. 9
`
`
`
`
`iii
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`
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`
`
`I.
`
`INTRODUCTION
`The Board’s decision denying institution of inter partes review of U.S.
`
`Patent No. 8,404,618 (“the ‘618 patent”) was correct and not an abuse of its
`
`discretion. Petitioner bore the burden of proving the challenged claims were
`
`unpatentable and failed to do so. Further, Petitioner’s new arguments, presented for
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`the first time in its Request for Rehearing, are improper and still fail to show that
`
`any challenged claim is unpatentable.
`
`Contrary to Petitioner’s assertions, the Board did not misapprehend or
`
`overlook Petitioner’s arguments regarding KIH-485’s identity or Takahashi.
`
`Rather, Petitioner did not present these arguments until its Request for Rehearing.
`
`The Board should not consider these new arguments, but even if the Board were to
`
`do so, the arguments fail because Petitioner cannot establish that pyroxasulfone
`
`was known as of the filing date of the ’618 patent. And Petitioner’s new Takahashi
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`grounds were considered and rejected by the Examiner, who found specifically that
`
`Takahashi teaches away from using a safener. The Examiner’s findings were
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`correct, and the Board should use its discretion to reject these new grounds under
`
`35 U.S.C. § 325(d) as a waste of the Board’s and of the Patent Owner’s time and
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`resources.
`
`For at least these reasons, the Board should deny Petitioner’s Request for
`
`Rehearing.
`
`
`
`1
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`
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`II.
`
`PETITIONER’S ARGUMENT REGARDING THE IDENTITY OF
`KIH-485 IS NEW AND FAILS IN ANY EVENT
`A.
`Petitioner improperly introduced a new inherency argument in its
`Request for Rehearing
`In a Request for Rehearing, Petitioner must “specifically identify all matters
`
`the party believes the Board misapprehended or overlooked, and the place where
`
`each matter was previously addressed in a motion, an opposition, or a reply.” 37
`
`C.F.R. § 42.71(d). The Petitioner cannot do so here because Petitioner’s inherency
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`argument is new. The term “inherent” or “inherency” was never used in the
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`petition, and Petitioner’s declarant Dr. Owen offers no testimony regarding what
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`might have been inherent in relation to KIH-485 as of the filing date. Tellingly,
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`Petitioner did not cite any of Wilson, Ex Parte Desai,1 Hogan, or Schering in its
`
`petition. To inject arguments of inherency now when they were not previously
`
`included is improper. The Request for Rehearing should be denied for at least this
`
`reason.
`
`B.
`Petitioner’s newly-cited case law does not support institution
`Petitioner argues that as of the filing date, KIH-485 was pyroxasulfone and
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`that KIH-485 thus necessarily had the structure claimed in the ’618 patent. But
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`Petitioner has not offered any evidence to support that argument. A code name like
`
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`1 The case cited by Petitioner as “Ex parte Manoj” is actually “Ex parte Desai”
`(Manoj C. Desai is the first named inventor). See U.S. Application No. 12/528,185.
`2
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`
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`
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`
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`KIH-485 could be applied to any chemical structure and could change over time.
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`Further, even if Petitioner had relied in its petition on the cases cited in its Request
`
`for Rehearing, the cases do not support Petitioner’s argument regarding its undated
`
`and unauthenticated Ex. 1025. Moreover, Petitioner’s reliance on Wilson and
`
`Hogan to support its use of a post-filing date reference is misplaced. See Paper 11
`
`at 4-5. Wilson and Hogan merely stand for the proposition that a document
`
`published after the filing date may still be used as evidence of the state of the art as
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`of the filing date. See In re Wilson, 311 F.2d 266, 268 (C.C.P.A. 1962); In re
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`Hogan, 559 F.2d 595, 605 (C.C.P.A. 1977).
`
`Patent Owner acknowledges that a post-filing date reference may be used to
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`show the state of the art and knowledge of one skilled in the art at the time the
`
`application was filed. However, Ex. 1025 says nothing about KIH-485 or the
`
`knowledge of one of skill in the art at the time the ‘618 patent was filed. Rather,
`
`Ex. 1025 is an undated, unauthenticated document that was created at least several
`
`years after the filing date. See Ex. 1025 at 1. And Ex. 1025 says nothing about
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`what one of ordinary skill in the art understood the code name KIH-485 to be as of
`
`the filing date. Petitioner argues, “Patent Owner Did Not Dispute, and All Record
`
`Evidence Shows, that KIH-485 Has the Claimed Structure. . . .” Paper 11 at 6. But
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`Petitioner misses the point. Petitioner’s mere introduction of one undated,
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`unauthenticated document, which constitutes the only evidence of record about the
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`3
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`
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`structure of KIH-485 at any time, does not satisfy Petitioner’s burden to show the
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`claims are unpatentable and cannot shift the burden to Patent Owner to disprove
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`Petitioner’s unsupported allegations. Quite simply, no evidence on the record
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`shows what KIH-485 was or was undertstood to be as of the filing date of the ‘618
`
`patent, much less that anyone knew the structure of or how to make KIH-485.
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`Neither Wilson nor Hogan supports Petitioner’s arguments. Wilson is not
`
`analogous to this case. Wilson filed a patent application for a known product
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`(polyurethane foam) and attempted to claim new properties (intercommunicating
`
`cell structure). Wilson at 268-269. The post-filing date reference in Wilson showed
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`that the property that resulted from making a known product in this well-known
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`way was inherent. In contrast, as of the filing date of the ‘618 patent, the
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`compound identified by KIH-485 was not known. The prior art does not disclose
`
`what KIH-485 was nor the process by which it was made. In fact, one skilled in the
`
`art at the time of the ‘618 patent understood that KIH-485 was an acetamide and
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`not pyroxasulfone. See Ex.1008, Col. 2:11-15. Nothing in the record suggests that
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`as of the filing date, one of skill in the art knew KIH-485 was pyroxasulfone. In
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`fact, nothing in the record demonstrates that as of the filing date KIH-485 was
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`pyroxasulfone.
`
`Like Wilson, Hogan does not support Petitioner’s argument. See Paper 11 at
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`4. In Hogan, later-discovered amorphous polymers claimed priority to solid
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`
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`4
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`
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`polymers. In fact, Hogan in its entirety cuts against Petitioner’s position. As the
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`court stated:
`
`A later state of the art is that state coming into existence after
`the filing date of an application. This court has approved use
`of later publications as evidence of the state of art existing on
`the filing date of an application. [FN17] That approval does
`not extend, however, to the use of a later (1967, Edwards)
`publication disclosing a later (1962) existing state of the art in
`testing an earlier (1953) application for compliance with s 112,
`first paragraph. The difference may be described as that
`between the permissible application of later knowledge about
`art-related facts existing on
`the filing date and
`the
`impermissible application of later knowledge about later art-
`related facts (here, amorphous polymers) which did not exist
`on the filing date.
`
`Hogan, 599 F.2d at 605 (emphasis added). Hogan does not support the proposition
`
`that later knowledge, e.g., that KIH-485 was at some point a pyroxasulfone, can be
`
`imputed to one skilled in the art at the time of the filing of the ‘618 patent, but
`
`rather just the opposite. As the court clarified in footnote 17, “none of [the prior
`
`cases] established a precedent for permitting use of a later existing state of the art
`
`in determining enablement under 35 U.S.C. § 112." Id.
`
`Ex Parte Desai is inapposite. First, it is a routine PTAB decision that was
`
`never designated informative or precedential, and thus, the decision is not binding.
`
`
`
`5
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`
`
`
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`See PTAB SOP2 (IV)(A) (“Every Board opinion is, by default, a routine opinion
`
`until it is designated as precedential or informative. . . . A routine opinion is not
`
`binding authority.”). Second, the facts are significantly different. In Ex Parte
`
`Desai, the Board relied on a post-filing date reference, Savarino, published very
`
`close in time to the priority date of the challenged application. In contrast,
`
`Petitioner relies on a reference that could not have been created, much less
`
`published, prior to 2008, at least four years after the ‘618 patent was filed. See Ex.
`
`1025 at 1. Third, the Board in Ex Parte Desai misapplied Wilson in finding the
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`product code name provided by Savarino was equivalent to the previously-existing
`
`characteristic of a known product (cell structure of foam) in Wilson. In fact, the
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`rejection cited by Petitioner was later withdrawn by the Examiner in the Notice of
`
`Allowance before the patent ultimately issued.
`
`C.
`Schering confirms that Polge cannot anticipate the ‘618 patent
`Petitioner relies on Schering to support the argument that pyroxasulfone is
`
`inherent to the code name KIH-485. Paper at 4. Schering does not support
`
`Petitioner’s proposition. In Schering, the compound in question, DCL, was a
`
`biological by-product of a known composition and therefore inherent, albeit
`
`unrecognized. See Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377
`
`(Fed. Cir. 2003). Contrary to Petitioner’s argument, Schering supports an
`
`argument that Polge is not enabling and thus does not anticipate. One skilled in the
`
`
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`6
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`
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`art could not practice Polge in its entirety without undue experimentation because
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`one could not prepare and combine KIH-485 with a lipophilic additive without
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`knowing the structure of KIH-485, or at least how to make KIH-485. KIH-485 is
`
`not a biological by-product of a known composition administered to a patient
`
`(where byproduct was inherent) as DCL was in Schering. A disclosure that uses
`
`only a code name cannot, by itself, possibly enable a compound; nor can it render
`
`the compound’s formula or class of chemistry inherent when at the date of the
`
`filing of the ‘618 patent no one knew what KIH-485 was or how to make it. Prior
`
`to the filing date of the ‘618 patent, KIH-485 was believed to be an acetamide
`
`according to Polge. Petitioner’s evidence shows that at least four years after the
`
`filing date, the code name KIH-485 was used to denote a pyroxasulfone. Polge
`
`does not disclose pyroxasulfone and certainly cannot enable pyroxasulfone. Thus,
`
`Petitioner’s Request for Rehearing based on its arguments related to Polge should
`
`be denied.
`
`III. PETITIONER’S NEW TAKAHASHI GROUNDS ARE IMPROPER
`AND SHOULD BE DENIED IN ANY EVENT
`A.
`Petitioner’s grounds that cite Takahashi but NOT Owen are new
`The Request for Rehearing must cite in the papers where the argument was
`
`previously raised. 37 C.F.R. § 42.71(d). As with its other new arguments,
`
`Petitioner does not cite to its petition because it cannot. While Petitioner refers to
`
`these new grounds with Takahashi that omit Owen as 3(a)-(i), Petitioner never
`
`
`
`7
`
`
`
`
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`raised these arguments before its Request for Rehearing. For example, the table
`
`provided on page 11 is not in the petition. And the rationale for the motivation to
`
`combine that is set forth on page 11 does not include a cite to the petition because
`
`the rationale was not presented in the petition. The rehearing request is “not
`
`intended as a vehicle simply to disagree with [the] outcome or to provide new
`
`arguments." Captioncall, Inc. v. Ultratec, Inc., IPR2014-00780, Paper No. 40
`
`(P.T.A.B. May 19, 2016) at 2-3. Petitioner’s attempt to do just that should be
`
`rejected.
`
`Each ground 3(a)-(i) in the petition relies on Owen for motivation to add a
`
`safener to Takahashi. Petitioner did not address motivation to combine Takahashi
`
`with a safener without Owen in the petition. In its Request, Petitioner states:
`
`Pyroxasulfone is also disclosed as compound 3-0188 in Table
`7 (Exhibit 1014, p. 30), and is exemplified in Preparation
`Example 46 of Takahashi (id. at, p. 78) and in Application
`Example 1, and as the sole herbicide in Application Example
`2 (id. at pp. 125-127) (showing effective herbicidal activity).
`
`Request at Page 12. Once again, Petitioner does not cite the petition because this
`
`argument was never made. In fact, Petitioner never refers to Table 7 in the
`
`petition, only to Tables 4 and 16-18. Petitioner’s new Takahashi grounds should be
`
`denied.
`
`
`
`8
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`
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`
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`B.
`Petitioner’s reliance on MPEP § 1207.03(a)(II) is misplaced
`As support for its attempt to add the new grounds of Takahashi without
`
`Owen, Petitioner cites MPEP § 1207.03(a)(II). But this section of the MPEP refers
`
`to an entirely different section of the C.F.R. that has no bearing on inter partes
`
`review. MPEP § 1207 addresses 37 C.F.R. § 41 (examination) rather than 37
`
`C.F.R. § 42 (inter partes review). That § 1207 is in the MPEP does not mean it is
`
`to be applied to all proceedings before the Patent Office. Rather, MPEP § 1207 is
`
`specifically related to the Examiner’s answer to an appeal brief and expressly
`
`allows for a new ground of rejection under § 41.39(a)(2) partly because a patent
`
`applicant can reopen prosecution with a Request for Continued Examination
`
`(“RCE”) to address the newly-added ground. C.F.R. § 42, which governs IPR
`
`proceedings, contains no such provision. Thus, Petitioner’s argument that
`
`Takahashi is somehow not a new ground should be rejected.
`
`C. Even if presented in a timely manner, Petitioner’s new Takahashi
`grounds should be denied under 35 U.S.C. § 325(d)
`Takahashi was before the Examiner during prosecution of the ‘618 patent,
`
`and the Examiner agreed with Patent Owner that “Takahashi contains no
`
`motivation to combine isoxazoline derivative herbicides with safeners, let alone
`
`any suggestion to specifically combine pyroxasulfone with any particular safener.”
`
`Ex. 1004 at 32. Because, the “same or substantially the same prior art or arguments
`
`
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`
`
`9
`
`
`
`
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`previously were presented to the Office,” the Board should reject grounds 3(a)-(i)
`
`based on Takahashi under 35 U.S.C. § 325(d).
`
`IV. PETITIONER’S REPEATED ATTEMPTS TO SHIFT ITS BURDEN
`TO PATENT OWNER SHOULD BE REJECTED
`Petitioner argues that the policy regarding a prior sale of a secret product is
`
`equally applicable here. See, Paper 11 at 8-9. In support of its argument,
`
`Petitioner states, “. . . Patent Owner has not introduced any evidence to contradict
`
`the structure shown in Exhibit 1025.” Id. at 7. Petitioner again misses the point. It
`
`is Petitioner’s burden to show the state of the art at the time of filing of the ‘618
`
`patent. Petitioner’s undated, unauthenticated Ex. 1025 does not support Petitioner’s
`
`assertions about the structure of KIH-485 years before Ex. 1025 was created.
`
`V. CONCLUSION
`
`Petitioner’s Request for Rehearing is a thinly-veiled attempt to introduce
`
`entirely new arguments and even new grounds. The Board’s rules specifically
`
`prohibit this. Petitioner’s Request for Rehearing should therefore be denied.
`
`Dated: February 2, 2018
`
`
`
`By:
`
`/John C. Alemanni /
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`
`
`10
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`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of this Patent Owner’s
`
`Opposition to Request for Rehearing was served electronically via email upon the
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`following:
`
`
`
`Susan E. Shaw McBee: PTAB-IPR@mmwvlaw.com
`Chester G. Moore, Ph.D.: PTAB-IPR@mmwvlaw.com
`Stephanie R. Amoroso, Ph.D.: PTAB-IPR@mmwvlaw.com
`Andrew S. Baluch: PTAB-IPR@mmwvlaw.com
`
`Dated: February 2, 2018
`
`By: /John C. Alemanni/
`
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`
`
`11
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`
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