Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 15
`Entered: April 2, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BAYER CROPSCIENCE LP,
`Petitioner,
`
`v.
`
`SYNGENTA LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-01332
`Patent 8,404,618 B2
`____________
`
`
`Before ZHENYU YANG, CHRISTOPHER G. PAULRAJ, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`
`DECISION ON PETITIONER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`

`

`IPR2017-01332
`Patent 8,404,618 B2
`
`I.
`
`INTRODUCTION
`Bayer Crop Science LP (“Petitioner”) requests a rehearing (Paper 12,
`“Reh’g Req.” or “Rehearing Request”), under 37 C.F.R. § 42.71(c) of our
`Decision Denying Institution (Paper 10, “Dec. Den’g Inst.”). Pursuant to
`our authorization, Sygenta Limited (“Patent Owner”) filed an Opposition to
`the Rehearing Request (Paper 13, “Opp’n” or “Opposition”) and Petitioner
`filed a Reply to Patent Owner’s Opposition (Paper 14, “Reply”).
`In our Decision Denying Institution, we determined “Petitioner . . .
`has not shown that a skilled artisan would have understood or recognized
`KIH-485 [as identified in the prior art Polge and Owen references] as the
`claimed herbicide prior to the filing date of the ’618 patent.” Dec. Den’g
`Inst. 10. On that basis, we denied institution as to each of the grounds of
`unpatentability set forth in the Petition, which relied upon either Polge or
`Owen. Id. at 10–11.
`Petitioner requests reconsideration for two reasons. First, Petitioner
`contends that we “erroneously applied settled law regarding use of post-
`filing evidence to establish a fact or characteristic about a product in the
`prior art to support anticipation and nonobviousness” insofar as “[t]here is
`no requirement that the chemical structure of a known prior art compound
`must be recognized to anticipate or render obvious later claims to the
`structure.” Reh’g Req. 1. Second, Petitioner contends that we “failed to
`appreciate that the combination of Takahashi with any one of the safener
`references in Grounds 3a-3i discloses all the limitations of the claims and
`motivates their combination, even without the Owen reference.” Id.
`
`
`
`
`
`2
`
`

`

`IPR2017-01332
`Patent 8,404,618 B2
`
`II. ANALYSIS
`A. Standard of Review
`When rehearing a decision on petition, the Board will review the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of
`discretion occurs if a decision is based on an erroneous interpretation of law,
`if a factual finding is not supported by substantial evidence, or if the
`decision represents an unreasonable judgment in weighing relevant factors.”
`Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party
`requesting rehearing bears the burden of showing an abuse of discretion, and
`“[t]he request must specifically identify all matters the party believes the
`Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).
`B. Whether We Erred in Our Consideration of Post-Filing
`Evidence
`As its first basis of alleged error, Petitioner contends that we
`misapprehended and misapplied the law regarding the use of post-filing
`evidence to establish a fact about the prior art. Reh’g Req. 3–10. The
`Petition cites Exhibit 1025 to establish that the compound called “KIH-485”
`in the prior art disclosures of Polge and Owen has a specific chemical
`structure that meets the claim requirements. See Pet. 29, 31. As noted in our
`Decision Denying Institution, however, Exhibit 1025 does not appear to
`have been published until well after the priority date claimed for the ’618
`patent, and we therefore declined to rely upon its teaching to support
`Petitioner’s contention that the “KIH-485” referenced in Polge and Owen
`fell within the scope of the claimed compound. Dec. Den’g Inst, 9–10.
`Petitioner contends that its reliance upon Exhibit 1025 is “legally sound”
`because “[i]t is well-established that evidence as to the identity or structure
`of a molecule can be used even if the evidence arose after the filing date of
`
`
`
`3
`
`

`

`IPR2017-01332
`Patent 8,404,618 B2
`
`the patent.” Reh’g Req. 4 (citing In re Wilson, 311 F.2d 266, 268–269
`(CCPA 1962); In re Hogan, 559 F.2d 595, 605 (CCPA 1977); Schering
`Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003)).
`We are not persuaded that we committed legal error based on the cited
`case law. The court cases cited by Petitioner primarily concern later
`discovered, but inherent, properties or characteristics of a claimed product
`that was otherwise previously known in the prior art. In Wilson, the court
`found that it was appropriate to rely upon post-filing evidence to show that
`polyurethane foam products made using processes known in the prior art had
`an open cell structure as claimed. 311 F.2d at 268. In Hogan, the court (in
`the context of addressing an enablement rejection) stated that it “has
`approved use of later publications as evidence of the state of art existing on
`the filing date of an application,” but “[t]hat approval does not extend . . . to
`the use of a later . . . publication disclosing a later . . . existing state of the art
`in testing an earlier . . . application for compliance with § 112, first
`paragraph.: 559 F.2d at 605. In Schering Corp., the court “reject[ed] the
`contention that inherent anticipation requires recognition in the prior art,”
`noting that “a prior art reference may anticipate without disclosing a feature
`of the claimed invention if that missing characteristic is necessarily present,
`or inherent, in the single anticipating reference.” 339 F.3d at 1377. In that
`case, the court found that claims directed to the metabolite DCL were
`anticipated by prior art teaching loratidine where “[t]he record shows that
`DCL necessarily and inevitably forms from loratidine under normal
`conditions,” i.e., “DCL is a necessary consequence of administering
`loratidine to patients.” Id. at 1378. There is no support in these cases for
`Petitioner’s contention that the very “identity” or “structure” of a claimed
`
`
`
`4
`
`

`

`IPR2017-01332
`Patent 8,404,618 B2
`
`compound that was only known in the prior art by an experimental code
`name can be established using post-filing evidence in order to support a
`conclusion of anticipation1 or obviousness.
`Here, the ’618 patent does not merely claim inherent properties or
`characteristics of a compound that was publicly known or generally
`accessible to any person of ordinary skill in the art. Rather, the Polge and
`Owen references relied upon by Petitioner only refer to a compound
`designated “KIH-485,” and it is undisputed that this experimental code name
`did not provide any information about the chemical structure, chemical
`formula, or other proprietary information about the compound before the
`filing date of the ’618 patent. Ex. 1040, 34; Ex. 2001 ¶ 27. Furthermore, we
`agree with Patent Owner that “[a] code name like KIH-485 could be applied
`to any chemical structure and could change over time.” Opp’n 2–3. In this
`regard, we note that Polge refers to “KIH-485” as an “acetamide” (Ex. 1008,
`
`
`1 The Petition only sets forth anticipation challenges based on the Polge
`patent and Polge publication, which have the same disclosure (collectively,
`“Polge”). Pet. 2. Polge identifies “KIH-485” as an “acetamide” that may be
`selected from a group of 11 herbicides. Ex. 1008, 4:53–58. Polge further
`identifies “suitable safeners” that may be included in a synergistic
`composition with any of those herbides, among which are identified some of
`the safeners recited in claim 1 of the ’618 patent. Id. at 4:64–5:2. Given the
`need to pick and choose among various herbicides and safeners based on the
`Polge disclosure to arrive at the claimed composition, we are not persuaded
`that Polge would be considered an anticipating reference even assuming
`arguendo that Petitioner properly establishes “KIH-485” as the claimed
`herbicide. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 n.5
`(Fed. Cir. 2008) (“[I]t is not enough that the prior art reference discloses part
`of the claimed invention, which an ordinary artisan might supplement to
`make the whole, or that it includes multiple, distinct teachings that the
`artisan might somehow combine to achieve the claimed invention.”).
`5
`
`
`
`

`

`IPR2017-01332
`Patent 8,404,618 B2
`
`col. 2 ll. 11–15), which the undisputed record shows is different in structure
`from the pyroxasulfone compound that is disclosed and claimed in the ’618
`patent and later identified as “KIH-485” in Exhibit 1025. Ex. 2001 ¶¶ 43–
`46.
`
`C. Whether We Erred in Failing to Consider the Teachings of
`Takahashi in Combination with Any One of the “Safener
`References”
`As its second basis of alleged error, Petitioner contends that
`Takahashi in combination with any one of the “safener references” disclose
`all claim elements even without reliance upon Owen’s teachings concerning
`“KIH-485.” Reh’g Req. 10–15. As we noted in our Decision Denying
`Institution, Petitioner expressly relied upon Owen’s teachings concerning
`“KIH-485” to support its obviousness challenges set forth in Grounds 3(a–i).
`Dec. Den’g Inst. 10. A request for rehearing is not an opportunity for
`Petitioner to change the grounds of unpatentability stated in the Petition.
`III. CONCLUSION
`Upon reconsideration of the record, we are not persuaded that we erred in
`our Decision Denying Institution. Accordingly, we deny the Rehearing
`Request.
`
`
`
`
`
`
`6
`
`

`

`IPR2017-01332
`Patent 8,404,618 B2
`
`PETITIONER:
`Susan E. Shaw McBee
`Chester Moore
`Stephanie Amoroso
`MCBEE MOORE WOODWARD & VANIK IP, LLC
`ptab-ipr@mmwvlaw.com
`cgmoore@mmwvlaw.com
`samoroso@mmwvlaw.com
`
`PATENT OWNER:
`John C. Alemanni
`Allison W. Dobson
`KILPATRICK TOWNSEND
`jalemanni@kilpatricktownsend.com
`adobson@kilpatricktownsend.com
`
`
`
`
`
`7
`
`