Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper No. 53
` Entered: June 19, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WATSON LABORATORIES, INC.
`Petitioner,
`v.
`UNITED THERAPEUTICS, CORP.
`Patent Owner.
`____________
`
`Case IPR2017-01621 and IPR2017-01622
`Patents 9,358,240 B2 and 9,339,507 B2
`____________
`
`
`Before TONI R. SCHEINER, ERICA A. FRANKLIN, and
`DAVID COTTA, Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`

`

`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`
` INTRODUCTION
`Watson Laboratories, Inc. (“Petitioner” or “Watson”) filed Petitions
`requesting an inter partes review of claims 1‒9 of U.S. Patent No. 9,358,240
`B2 (Ex. 1001 in IPR2017-01621, “the ’240 patent”) and of claims 1–9 of
`U.S. Patent No. 9,339,507 (Ex. 1001 in IPR 2017-01622, “the ’507 patent”).
`IPR2017-01621, Paper 1; IPR 2017-01622, Paper 2. United Therapeutics
`Corp. (“Patent Owner” or “UTC”) filed Preliminary Responses to the
`Petitions, opposing institution. IPR2017-01621, Paper 6; IPR2017-01622,
`Paper 5. On January 11, 2018, after consideration of the Petition and
`Preliminary Response, we entered a Decision granting institution of inter
`partes review. IPR2017-01621, Paper 10; IPR2017-01622, Paper 9.
`On April 24, 2018, the Supreme Court held that a decision to institute
`under 35 U.S.C. § 314 may not institute on less than all claims challenged in
`the petition. SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348, 1359–1360 (U.S. Apr.
`24, 2018). On April 26, 2018, the Office issued Guidance on the Impact of
`SAS on AIA Trial Proceedings, which states that “if the PTAB institutes a
`trial, the PTAB will institute on all challenges raised in the petition.”
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/trials/guidance-impact-sas-aia-trial. On April 30, 2018, pursuant to
`the Supreme Court’s decision in SAS, and the Guidance provided by the
`Office, we issued an order modifying our institution decision to institute on
`all of the challenged claims and all of the grounds presented in the Petition.
`IPR2017-01621, Paper 42; IPR2017-01622, Paper 43. On May 14, 2018,
`Patent Owner filed a Request for Rehearing (“Req. Reh’g”) seeking
`reconsideration of our Decision to modify our institution decision to institute
`on all challenged claims and all challenged grounds. IPR2017-01621, Paper
`
`2
`
`

`

`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`45; IPR2017-01622, Paper 46. For the reasons that follow, we deny
`Petitioner’s Request.
`
`I. ANALYSIS
`When reconsidering a decision on institution, we review the decision
`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may
`be found 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. Star
`Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold
`P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203
`F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the
`burden of showing the decision should be modified, which includes
`specifically identifying all matters the party believes we misapprehended or
`overlooked. 37 C.F.R. § 42.71(d).
`Patent Owner’s Request for Rehearing asserts that the SAS does not
`require the Board to institute on every ground presented in a petition. Patent
`Owner explains:
`the question presented to the [SAS] Court and the statute at
`issue in SAS, 35 U.S.C. § 318(a), states only that “the [Board]
`shall issue a final written decision with respect to the
`patentability of any patent claim challenged by the petitioner
`and any new claim added under section 316(d).” Id. at 1361
`(emphasis added). SAS and the statute do not mandate the
`Board to institute on additional grounds when a final written
`decision would necessarily be reached on all the challenged
`claims under the original Decision.
`Req. Reh’g 3. Patent Owner then argues that since the ground on which we
`originally instituted review included all of the challenged claims, there was
`
`3
`
`

`

`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`no need to modify our institution decision to include the two grounds on
`which we originally declined to institute. We are not persuaded.
`
`Our decision to modify our original institution decision to include all
`challenged grounds was based not just on SAS, but also on Office policy, as
`reflected in the April 26, 2018, Guidance on the Impact of SAS on AIA Trial
`Proceedings. The Federal Circuit has recently embraced the approach set
`forth in the Guidance, explaining:
`Equal treatment of claims and grounds for institution purposes
`has pervasive support in SAS. Although 35 U.S.C. § 318(a), the
`primary statutory ground of decision, speaks only of deciding
`all challenged and added “claim[s],” the Supreme Court spoke
`more broadly when considering other aspects of the statutory
`regime, and it did so repeatedly. The Court wrote that “the
`petitioner is master of its complaint and normally entitled to
`judgment on all of the claims it raises.” SAS, 138 S.Ct. at 1355.
`It said that § 312 contemplates a review “guided by a petition
`describing ‘each claim challenged’ and ‘the grounds on which
`the challenge to each claim is based,’” and it added that the
`Director does not “get[ ] to define the contours of the
`proceeding.” Id. The Court also said that § 314’s language
`“indicates a binary choice—either institute review or don’t.”
`Id. It further reasoned that “[n]othing suggests the Director
`enjoys a license to depart from the petition and institute a
`different inter partes review of his own design” and that
`“Congress didn’t choose to pursue” a statute that “allows the
`Director to institute proceedings on a claim-by-claim and
`ground-by-ground basis” as in ex parte reexamination. Id. at
`1356 (emphasis in original). And the Court concluded that “the
`petitioner’s petition, not the Director’s discretion, is supposed
`to guide the life of the litigation,” id., and the “petitioner’s
`contentions ... define the scope of the litigation all the way from
`institution through to conclusion,” id. at 1357.
`
`
`We read those and other similar portions of the SAS opinion as
`interpreting the statute to require a simple yes-or-no institution
`choice respecting a petition, embracing all challenges included
`
`4
`
`

`

`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`
`in the petition, and we have seen no basis for a contrary
`understanding of the statute in light of SAS.
`PGS Geophysical AS v. Iancu, __ F.3d __, 2018 WL 2727663, *3–4 (Fed.
`Cir. June 7, 2018). Accordingly, we are not persuaded by Patent Owner’s
`argument that we should decline to institute on all challenged claims because
`SAS does not require it.
`Patent Owner further argues that “[e]ven if SAS can be interpreted as
`requiring institution on each prior art ground, the statute permits review
`‘only on the basis of prior art consisting of patents and printed
`publications.’” Req. Reh’g. 4 (citing 35 U.S.C. § 311(b)). Patent Owner
`then asserts that Grounds 2 and 3 fail to meet this statutory requirement
`because they rely on documents that do not constitute prior art. We have
`addressed the deficiencies regarding those grounds in the Institution
`Decision. Our determination to proceed on all grounds is based upon the
`policy set forth in the above-mentioned Office Guidance, in view of SAS,
`along with our determination that Petitioner has shown a reasonable
`likelihood that it would prevail in showing the unpatentability of at least one
`claim in the petition. Regarding that determination, Patent Owner has not
`persuaded us that we have misapprehended or overlooked any matters. See
`37 C.F.R. § 42.71(d).
`
`III. CONCLUSION
`For the foregoing reasons, we conclude that Patent Owner has not
`shown that the Board abused its discretion in ordering institution on all
`grounds. See 37 C.F.R. § 42.71(d).
`
`
`
`5
`
`

`

`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`6
`
`

`

`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`PETITIONER:
`Michael K. Nutter
`Andrew R. Sommer
`WINSTON & STRAWN LLP
`mnutter@winston.com
`asommer@winston.com
`
`PATENT OWNER:
`Stephen B. Maebius
`George Quillin
`FOLEY & LARDNER LLP
`smaebius@foley.com
`gquillin@foley.com
`
`Shaun R. Snader
`UNITED THERAPEUTICS CORP.
`ssnader@unither.com
`
`Douglas Carsten
`Richard Torczon
`Robert Delafield
`Veronica Ascarrunz
`WILSON, SONSINI, GOODRICH & ROSATI
`dcarsten@wsgr.com
`rtorczon@wsgr.com
`bdelafield@wsgr.com
`vascarrunz@wsgr.com
`
`
`7
`
`