Trials@uspto.gov
`571-272-7822
`
` Paper 67
`
`Date: May 21, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GILEAD SCIENCES, INC.,
`Petitioner,
`
`v.
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA,
`Patent Owner.
`____________
`
`IPR2017-01712
`Patent 8,815,830 B2
`____________
`
`
`
`Before ERICA A. FRANKLIN, ZHENYU YANG, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
` Paper 67
`
`Date: May 21, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GILEAD SCIENCES, INC.,
`Petitioner,
`
`v.
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA,
`Patent Owner.
`____________
`
`IPR2017-01712
`Patent 8,815,830 B2
`____________
`
`
`
`Before ERICA A. FRANKLIN, ZHENYU YANG, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01712
`Patent 8,815,830 B2
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`
`INTRODUCTION
`Gilead Sciences, Inc. (“Petitioner”) filed a Petition (Paper 1 (“Pet.”)),
`seeking an inter partes review of claims 1–9, 11–21, and 23–28 of U.S.
`Patent No. 8,815,830 B2 (Ex. 1001, “the ’830 patent”). We instituted trial to
`review the challenged claims. Paper 46 (“Dec.”). Thereafter, Regents of the
`University of Minnesota (“Patent Owner”) filed a Response to the Petition
`(Paper 54, “PO Resp.”), Petitioner filed a Reply (Paper 57), and Patent
`Owner filed a Sur-Reply (Paper 58). An oral hearing for this proceeding was
`held on February 3, 2021, and a transcript of that hearing is of record. See
`Paper 66 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6 and issues this final
`written decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`the reasons provided below, and based on the evidence and arguments
`presented in this proceeding, we conclude Petitioner has established by a
`preponderance of the evidence that claims 1–9, 11–21, and 23–28 of the
`’830 patent are unpatentable.
`
`Related Matters
`According to the parties, Patent Owner asserted the ’830 patent
`against Petitioner in Regents of the University of Minnesota v. Gilead
`Sciences, Inc., No. 16-cv-02915 (D. Minn.). Pet. x; Paper 3, 1. The case was
`later transferred to the U.S. District Court for Northern District of California
`and was docketed as Regents of the University of Minnesota v. Gilead
`Sciences, Inc., No. 3:17-cv-06056 (N.D. Cal.). Paper 22, 1; Paper 23, 1.
`Petitioner also filed three other petitions (IPR2017-01753,
`IPR2017-02004, IPR2017-02005), all challenging the claims of the
`
`2
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`’830 patent. Paper 23, 1. We previously denied institution in those
`proceedings. IPR2017-01753, Paper 42; IPR2017-02004, Paper 38;
`IPR2017-02005, Paper 40.
`
`Case History
`Petitioner filed the Petition on July 7, 2017. Paper 5. With our
`authorization, the parties briefed the issue of whether the doctrine of
`sovereign immunity applies in this proceeding such that we should grant
`Patent Owner’s Motion to Dismiss the Petition. Papers 14, 15, 16.
`While the Motion to Dismiss in this case was pending, the Board
`denied Patent Owner’s motions to dismiss based on sovereign immunity in
`several other inter partes review proceedings. LSI Corp. v. Regents of the
`Univ. of Minn., IPR2017-01068, Paper 19 (PTAB Dec. 19, 2017); Ericsson
`Inc. v. Regents of the Univ. of Minn., IPR2017-01186, -01197, -01213,
`-01214, -01200, -01219 (PTAB Dec. 19, 2017). On February 12, 2018,
`Patent Owner filed a Notice of Appeal, seeking immediate appellate review
`of those decisions. See, e.g., IPR2017-01186, Paper 22.
`Under such circumstances, and at the request of Patent Owner, we
`suspended this proceeding in view of the appellate adjudication of the state-
`sovereign-immunity issue. Papers 17, 22, 25, 28. Petitioner then sought, and
`was granted, leave to intervene in those appeals. Paper 26, 2.
`On June 14, 2019, the Federal Circuit affirmed the Board’s decision
`denying Patent Owner’s motion to dismiss in those proceedings. Regents of
`the Univ. of Minn. v. LSI Corp., 926 F.3d 1327, 1330 (Fed. Cir. 2019)
`(holding state sovereign immunity does not apply to IPR proceedings).
`On January 13, 2020, the Supreme Court denied Patent Owner’s petition for
`
`3
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`writ of certiorari. Regents of the Univ. of Minn. v. LSI Corp., 140 S. Ct. 908
`(Jan. 13, 2020) (No. 19-337). The next day, we denied Patent Owner’s
`Motion to Dismiss and lifted the stay order in this proceeding. Paper 32.
`The ’830 Patent
`The ’830 patent issued from application No. 14/229,292 (“the
`’292 application”), filed on March 28, 2014, which is a continuation of
`application No. 13/753,252 (hereinafter “NP4”), filed on January 29, 2013,
`which is a continuation of application No. 11/721,325 (hereinafter “NP3”),
`filed on June 8, 2007, which is a national stage application of
`PCT/US2005/044442 (hereinafter “NP2”), filed on December 8, 2005,
`which claims priority to provisional application No. 60/634,677 (hereinafter
`“P1”), filed on December 9, 2004. Ex. 1001, codes (21), (22), (60), (63),
`1:7–15; Pet. 29.
`The ’830 patent relates to nucleosides with antiviral and anticancer
`activity, specifically nucleotide phosphoramidate prodrugs that are
`potentially good substrates for human histidine triad nucleotide-binding
`protein 1 (“hHINT1”). Ex. 1001, 2:13–47. According to the ’830 patent,
`“[i]nspection of the active site of hHINT1 has revealed that hydrogen
`bonding, ion pairing or polar interactions at the 2'- and 3'-positions
`preferentially interact with the active site residue Asp-43, which is consistent
`with the reduced ability of 2'-deoxy nucleoside phosphoramidates to serve as
`substrates.” Id. at 2:36–42. In addition, the ’830 patent discloses that
`compounds containing an electropositive group at the 2'-position “are
`especially good substrates for hHINT1.” Id. at 2:44–48.
`
`4
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`IPR2017-01712
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`
`The ’830 patent acknowledges that “U.S. Pat. No. 6,475,985 reports
`certain specific nucleoside phosphoramidate analogs having anticancer
`and/or antiviral properties.” Id. at 1:61–63. It states that there were other,
`continued interests “in phosphoramidate nucleoside analogs due to their
`demonstrated utility as prodrugs of antiviral and anticancer nucleoside
`monophosphates, or pronucleotides.” Id. at 1:63–66. The ’830 patent states
`that despite the prior-art studies on this topic, there was still “a need for
`chemotherapeutic agents with antiviral and[/]or anticancer properties.” Id.
`at 2:6–8. According to the ’830 patent, its invention provides such
`“compounds that act as antiviral and[/]or anticancer agents.” Id. at 2:48–49.
`Illustrative Claim
`Claim 1 is independent and is reproduced below:
`1. A compound of formula I:
`
`
`
`wherein:
`R1 is guanine, cytosine, thymine, 3-deazaadenine, or uracil,
`optionally substituted by 1, 2, or 3 U; wherein each U is
`independently halo, hydroxy, (C1-C6)alkyl, (C3-C6)cycloalkyl,
`(C1-C6)alkoxy,
`(C3-C6)cycloalkyloxy,
`(C1-C6)alkanoyl,
`(C1-C6)alkanoyloxy,
`trifluoromethyl,
`hydroxy(C1-C6)alkyl,
`––(CH2)1-4P(=O)(ORw)2, aryl, aryl(C1-C6)alkyl, or NRxRy;
`R2 is halo;
`
`5
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`IPR2017-01712
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`
`(C3-C6)cycloalkyl, aryl,
`
`R6 and R7 are independently H or (C1-C6)alkyl;
`R3 is hydroxy;
`(C1-C6)alkyl,
`is hydrogen,
`R4
`aryl(C1-C6)alkyl, or 2-cyanoethyl;
`R5 is an amino acid;
`X is oxy, thio, or methylene;
`each Rw is independently hydrogen or (C1-C6)alkyl;
`Rx and Ry are each independently hydrogen, (C1-C6)alkyl,
`(C3-C6)cycloalkyl,
`phenyl,
`benzyl,
`phenethyl,
`or
`(C1-C6)alkanoyl; or Rx and Ry together with the nitrogen to which
`they are attached are pyrrolidino, piperidino or morpholino;
`wherein any (C1-C6)alkyl of R1, R4-R7, Rw, Rx, and Ry is
`optionally substituted with one or more halo, hydroxy,
`(C1-C6)alkoxy,
`(C3-C6)cycloalkyloxy,
`(C1-C6)alkanoyl,
`(C1-C6)alkanoyloxy, trifluoromethyl, azido, cyano, oxo (=O),
`(C1-C6)alkyl, (C3-C6)cycloalkyl, (C3-C6)cycloalkyl(C1-C6)alkyl,
`(C1-C6)alkyl-S––(C1-C6)alkyl-,
`aryl,
`heteroaryl,
`alkyl(C1-C6)alkyl, or heteroaryl(C1-C6)alkyl, or NRajRak;
`wherein each Raj and Rak
`is
`independently hydrogen,
`(C1-C6)alkyl, (C3-C6)cycloalkyl, phenyl, benzyl, or phenethyl;
`and wherein any aryl or heteroaryl may optionally be substituted
`with one or more substituents selected from the group consisting
`of
`halo,
`hydroxy,
`(C1-C6)alkyl,
`(C3-C6)cycloalkyl,
`(C1-C6)alkoxy,
`(C3-C6)cycloalkyloxy,
`(C1-C6)alkanoyl,
`(C1-C6)alkanoyloxy, trifluoromethyl, trifluoromethoxy, nitro,
`cyano, and amino;
`or a pharmaceutically acceptable salt thereof.
`
`6
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`IPR2017-01712
`Patent 8,815,830 B2
`
`
`Instituted Ground of Unpatentability
`We instituted trial to determine whether claims 1–9, 11–21, and 23–28
`of the ’830 patent are unpatentable based on the following single ground:
`Claims Challenged
`35 U.S.C. §
`References
`1–9, 11–21, 23–28
`102
`Sofia1
`
`Petitioner relies on the Declarations of Gerardus Josephus Petrus
`Henricus Boons, Ph.D. Exs. 1011,2 1039. Patent Owner relies on the
`Declaration of Andrea Brancale, Ph.D. Ex. 2058.
`
`ANALYSIS
`Legal Standards
`In an inter partes review, the burden of persuasion is on the petitioner
`to prove unpatentability by a preponderance of the evidence, and that burden
`never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`A patent claim is entitled to the benefit of the filing date of an earlier
`filed, related application if it meets the requirements of 35 U.S.C. § 120.
`Hollmer v. Harari, 681 F.3d 1351, 1355 (Fed. Cir. 2012). “Section 120
`places the burden on the patent owner to provide a clear, unbroken chain of
`
`
`1 Sofia et al., U.S. Patent Appl. Pub. No. 2010/0016251, published
`January 21, 2010 (Ex. 1004).
`2 Exhibit 1011 was originally executed by Victor E. Marquez, Ph.D. Later,
`we granted Petitioner’s request to substitute the Marquez Declaration in
`support of the Petition (Ex. 1011), with the Boons Declaration. Paper 48.
`Dr. Boons states that he adopts as his own the substantive statements and
`opinions in the Marquez Declaration. Ex. 1036 ¶ 29.
`7
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`Patent 8,815,830 B2
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`priority.” Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309, 1317 (Fed.
`Cir. 2018) (citing Medtronic CoreValve, LLC v. Edwards Lifesciences
`Corp., 741 F.3d 1359, 1366 (Fed. Cir. 2014)).
`To claim “the benefit of the filing date of an earlier application under
`35 U.S.C. § 120, each application in the chain leading back to the earlier
`application must comply with the written description requirement of
`35 U.S.C. § 112.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571
`(Fed. Cir. 1997); see also Novozymes A/S v. DuPont Nutrition Biosciences
`APS, 723 F.3d 1336, 1344 (Fed. Cir. 2013) (“[C]laims added during
`prosecution must find support sufficient to satisfy § 112 in the written
`description of the original priority application.”).
`“[T]o satisfy the written description requirement, the disclosure as
`originally filed does not have to provide in haec verba support for the
`claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding, Inc.,
`230 F.3d 1320, 1323 (Fed. Cir. 2000). It, however, must convey with
`reasonable clarity to those skilled in the art that the inventor was in
`possession of the invention. Id. “Put another way, one skilled in the art,
`reading the original disclosure, must immediately discern the limitation at
`issue in the claims.” Id.
`“The purpose of the written description requirement is to prevent an
`applicant from later asserting that he invented that which he did not.”
`Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330
`(Fed. Cir. 2003); see also Droplets, 887 F.3d at 1316 (emphasizing
`that § 120 embodies an important public policy and requires “strict
`adherence to its requirements”). Accordingly, “[e]ntitlement to a filing date
`
`8
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`does not extend to subject matter which is not disclosed, but would be
`obvious over what is expressly disclosed.” Lockwood, 107 F.3d at 1571–72;
`see also Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352
`(Fed. Cir. 2010) (en banc) (“[A] description that merely renders the
`invention obvious does not satisfy the requirement.”). Likewise, a “mere
`wish or plan” for obtaining the claimed invention does not satisfy the written
`description requirement. Regents of the Univ. of Cal. v. Eli Lilly & Co., 119
`F.3d 1559, 1566 (Fed. Cir. 1997).
`The test for written description support “requires an objective inquiry
`into the four corners of the specification from the perspective of a person of
`ordinary skill in the art.” Ariad, 598 F.3d at 1351. A sufficient description of
`a genus “requires the disclosure of either a representative number of species
`falling within the scope of the genus or structural features common to the
`members of the genus so that one of skill in the art can visualize or
`recognize the members of the genus.” Id. at 1350 (internal quotation marks
`omitted). “[A]n adequate written description requires a precise definition,
`such as by structure, formula, chemical name, physical properties, or other
`properties, of species falling within the genus sufficient to distinguish the
`genus from other materials.” Id.
`The primary consideration in written description analysis is factual
`and must be assessed on a case-by-case basis. Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555, 1562 (Fed. Cir. 1991); see also Smith v. Horne,
`450 F.2d 1401, 1404 (CCPA 1971) (“The question as to whether an
`application forms a proper support for a claim to a composition which is not
`specifically disclosed, but which falls among compositions suggested by
`
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`Patent 8,815,830 B2
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`general language in the application is one which must be determined largely
`by the particular circumstances of each case.”). The Federal Circuit has
`warned that each case involving the issue of written description “must be
`decided on its own facts. Thus, the precedential value of cases in this area is
`extremely limited.” Vas-Cath, 935 F.2d at 1562 (quoting In re Driscoll,
`562 F.2d 1245, 1250 (CCPA 1977)).
`Claim Construction
`In an inter partes review based on a petition filed before
`November 13, 2018, the Board interprets a claim term in an unexpired patent
`according to its broadest reasonable construction in light of the specification
`of the patent in which it appears. 37 C.F.R. § 42.100(b) (2016);3 Cuozzo
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that
`standard, and absent any special definitions, we assign claim terms their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art at the time of the invention, in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). Any special definitions for claim terms must be set forth
`with reasonable clarity, deliberateness, and precision. In re Paulsen,
`30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`
`3 The rule changing the Board’s claim construction standard to the same
`standard used by district courts does not apply here, as the Petition was filed
`before the effective date of the final rule, November 13, 2018. See Changes
`to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
`(Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13,
`2018).
`
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`
`Claim terms need only be construed to the extent necessary to resolve
`the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011). On this record and for purposes of this Decision, we see no
`need to construe any term expressly.
`Anticipation by Sofia
`Petitioner argues that Sofia anticipates claims 1–9, 11–21, and 23–28.
`Pet. 16–27.
`Sofia discloses phosphoramidate prodrugs of nucleoside derivatives
`for the treatment of viral infections. Ex. 1004, Abstract. Example 25 of Sofia
`is (S)-2-{[(2R,3R,4R,5R)-5-(2,4-Dioxo-3,4-dihydro-2H-pyrimidin-1-yl)-4-
`fluoro-3-hydroxy-4-methyl-tetrahydro-furan-2-ylmethoxy]-
`phosphorylamino}-propionic acid isopropyl ester. Id. at 58. It has the
`following structure:
`
`
`The figure above shows the structure of example 25 of Sofia. Id. at 49.
`According to Petitioner, example 25 of Sofia contains, in the nomenclature
`of the ’830 patent, oxy at X, uracil at R1, fluoro at R2, hydroxy at R3, phenyl
`at R4, the isopropyl ester of L-alanine, an amino acid at R5, methyl at R6, and
`hydrogen at R7. Pet. 18 (citing Ex. 1011 ¶ 143). Thus, Petitioner asserts that
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`example 25 of Sofia meets every limitation of challenged claim 1. Id.
`at 18–19. Petitioner also points to evidence to support its argument that
`example 25 of Sofia meets every additional limitation of challenged
`claims 2–9, 11–21, and 23–28. Id. at 20–27.
`Patent Owner does not dispute, and after reviewing the record, we
`agree with the parties, that Sofia discloses every limitation of each asserted
`claim.
`This, however, does not end our inquiry, because the outcome of this
`case also turns on the priority date of the challenged claims, and thus, the
`prior-art status of Sofia. As explained below, we agree with Petitioner that
`the challenged claims are not entitled to a priority date earlier than
`March 28, 2014. Therefore, Sofia qualifies as prior art.
`Priority Date
`According to Petitioner, none of the priority applications (P1, NP2,
`NP3, and NP4) provides written description support for the challenged
`claims. Pet. 27–73. Thus, Petitioner contends that the priority date of the
`challenged claims is no earlier than March 28, 2014, the filing date of the
`application that issued as the ’830 patent. Id. at 27. Patent Owner argues that
`Petitioner fails to establish NP2 lacks written description support for the
`challenged claims. PO Resp. 21–75. As explained below, based on the
`evidence of record, we find Petitioner’s arguments more persuasive.
`As a preliminary matter, we note that (1) NP2 incorporates P1 by
`reference, and contains additional disclosure (see Ex. 1007, 1:9–11,
`26:22–27:7); (2) NP3 contains the same disclosure as NP2 (compare
`Ex. 1006, with Ex. 1007); and (3) NP4 was filed after the publication date of
`
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`Sofia (see Ex. 1001, code (63)). Thus, in this Decision, as Patent Owner
`does in its Response, we focus our analysis on NP2, and through the
`incorporation by reference, P1. We also focus, as the parties do, on
`substituents at R2, R3, R5, R6, and R7. See Pet. 35–39; PO Resp. 26.
`Petitioner’s Arguments
`NP2 discloses a genus of nucleoside phosphoramidates with a
`skeleton, specified by formula I, identical to challenged claim 1’s skeleton.
`Ex. 1007, 3:18–19. Petitioner presents Table 3 in the Petition, reproduced
`below, to compare the substituents at each relevant position between P1/NP2
`and challenged claim 1:
`
`13
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`’830 patent
`Pl
`clalm 1
`
`
`
`
`R; H, halo, hydroxy, (C 1—C5)alkyl, (C 3—C5)cycloalkyl, (C 1—
`
`C6)alkanoyloxy, trifluoromethyl, azido, cyano, -
`
`N(RZ)C(=0)N(Raa)(Rab),
`
`-N(RZ)C(=O)OR,C, or NRadRae, provided that one of R3
`
`and R5 is hydroxy halo, (C 1—C6)alkoxy, (C3-
`
`C6)cycloalkyloxy, trifluoromethyl, cyano, or NRadRae;
`
`R2 is H, (C 1—C6)alkyl, (C3-C6)cycloalkyl, phenyl, benzyl,
`
`or phenethyl [Ex 1008, at 3:23-42];
`
`R,a and Rab are each independently H, (C 1-C6)alkyl, (C,—
`
`C6)cycloalkyl, phenyl, benzyl, or phenethyl; or R3,. and
`
`Rab together with the nitrogen to which they are attached
`
`are pyrrolidino, piperidino or morpholino [EX. 1008, at
`
`4: 24—26];
`
` C6)alkoxy, (C3-C6)cycloalkyloxy, (C 1-C5)alkanoyl, (C 1 -
`
`halo
`
`
`
`
`
`
`
`14
`
`14
`
`R3,, is H, (C 1-C5)all(yl, (C3-C 6)cycloalkyl, phenyl, benzyl,
`
`
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`’83!) patent
`P1 claim 1
`
`
`
`er phenethyl [Ex iii-38. at 4: SET-28]:
`
`Rad is H. {C1-Cfi}alkyl. {Cg-Cajeyelealkyl. phenyl. henzyl.
`
`er phenethyl [Ex IUGS. at 4: 29-3D]:
`
`Rae is H. (C1-C5)alkyl. (C3-C5)eyeloalkyl. phenyl. benzyl.
`
`er phenefllyl [Ex iii-38. at 5: 1-2].
`
`H. hale. hydrexy. (C1-C5)alk}rl. (C3-Cfi)eyelealkyl. (C1-
`
`Cflalkexy. {C3-C5)eyelealkylexy. (Cl-cfihlkaneyl. {C1-
`
`Cfi)alkaneylexy. trifluemmethyl. slide. eyene. -
`
`N{R1)C(=0)N(Rsa)(Rab)-
`
`-N(RZ)C(=D)ORM. 01' mm [Ex. lens. at 4: 3-6]:
`
`R1 is H. {C1-Cfi}alkyl. (C3-C5)eyeloalkyl. phenyl. henzyl.
`
`er phenethyl [Ex iii-38. at 3:23—42]:
`
`R33 and Rah are each mdependently H. (Cl-Cahlkyl. (C3-
`
`Cfi)eyelualkyl. phenyl. benzyl. er phenethyl: 01' R.an and
`
`Rab tegether wifli the nitrogen tn which they are attached
`
`are pyrrolidino. piperidjno or lllfll‘phflljflfl [Ex lflflfi. at
`
`4: 24-26]:
`
`
`
`Rac is H. (C1-Cfi)alkyl. (C3-C5)eyeloalkyl. phenyl. benzyl.
`
`er phenethyl [Ex iii-38. at 4: SET-28]:
`
`Rad is H {C1-Cfi}alkyl. {C3-C5)eyelealkyl. phenyl. henzyl.
`
`er phenethyl [Ex IUGS. at 4: 29-3D]:
`
`R.ae is H. (C1-Cfi)alkyl. (C3-C5)C}TClOal.kyl. phenyl. benzyl.
`
`er phenefllyl [Ex iii-38. at 5: 1-2].
`
`R5 aiilino acid. peptide. or I‘Q'RKRIJ [Ex 10-38. at 3: 9]:
`aiiiiim acid
`
`
`15
`
`15
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`IPR2017-01712
`
`IPR2017-01712
`Patent 8,815,830 B2
`Patent 8,815,830 B2
`
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`P1
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`5
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`83!] patent
`claim 1
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`The term “peptide“ describes a sequence of 2 to 25
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`amino acids or peptidyl residues. The sequence may be
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`linear or cyclic. A peptide can be linked to the
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`remainder of a compound of formula I through the
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`carboxy terminus. the amino terminus. or through any
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`other convenient point of attachment. Preferably. a
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`peptide comprises 2 to 25. or 5-25 amino acids. [EL
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`1008. at 8: 18-22]:
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`Each R-1 and R1, is independently H. {C1-C5}alkyl. {C3-
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`CQcycloalkyl. aryl. or aryl(C1-C5}alkyl: or R43 and Rh
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`together with the nitrogen to which they are attached
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`form a pyrrolidino. piperidino or morpholino [Ex I'D-38.
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`
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`at 4: 15-1 7’].
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`H. halo. hydroxy. {C1-C5)alkyl. (Cg-Egcycloalkyl. (C1-
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`CQallcoxy. {C3-C5)cycloallcyloxy. (Cl-Cahlkanoyl. (C1-
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`CQalltanoyloxy. trifluoromethyl. azido. cyano. -
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`NfiRJC (=0)N(Raa){Rab)-
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`-N{RZ)C{=D)DRM. or NRMRE. provided that one of R2
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`and R5 is hydroxy halo. (C1-Cfi)allcoxy. (C3-
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`Cfi)cycloalkyloxy. trifluoronlethyl. cyano. or NRadRae
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`[Ex. lflflfi. at 3:23-42]:
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`R2 is H. (C1-Cfi}alkyl. (C3-C5)cycloalkyl. phenyl. benzyl.
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`or phenethyl [Ex 1121-38. at 3:23—42]:
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`Rea and Rah are each independently H. (Cl-Cahlkyl. (C3-
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`IPR2017-01712
`
`IPR2017-01712
`Patent 8,815,830 B2
`Patent 8,815,830 B2
`
`
`’83l] patent
`claim 1
`
`Cflcyclnalkyl. phenyl. henzyl. nr phenethyl: 01' Rail and
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`Rab tngether wifll the nitrogen tn which they are attached
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`are pyn‘nlidinn. piperidinn or ninrphnlinn [Ex lflflB. at
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`4: 24-26]:
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`R1: is H. (C1-Cfi)alkyl. (C3'Cfi)CYCl(}al.ky1. phenyl. henzyl.
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`cur phenefl1y1 [Ex 10-38. at 4: SET-28]:
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`Rad is H. {C1-Cfi}aflcyl. (C3-Cfi)cyclnalkyl. phenyl. henzyl.
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`cur phenefl1y1 [Ex 10-38. at 4: 29-3D]:
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`Rae is H. (C1-C5)alkyl. (C3-C5)cyclcalkyl. phenyl. henzyl.
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`cur phenefl1y1 [Ex 10-38. at 5: 1-2].
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`H. halo. hydchy. (C1-C5)alky1. (C3-C5)cyclnalkyl. (C1-
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`Cflalknxy. (C3-C5)cyclcalkylnxy. (Cl-cfijmlkannyl. (C1-
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`Cflalkannylnxy. triflnnrnmethyl. azidn. cyann. -
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`
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`NmZJC(=O)N(Rfia){Rflb)-
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`-N{RZ)C{=D)DRK. 01'M:
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`R1 is H. {C1-C5}alkyl. {C3-C5)cyclnalkyl. phenyl. henzyl.
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`cur phenethyl [Ex 10-38. at 3:23—42]:
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`R.ail and Rah are each independently H. (C1-C5}alkyl. (C3-
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`Cfi)cyc1nalkyl. phenyl. henzyl. cur phenethyl: 01' Rail and
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`Rab tngether wifll the nitrogen to which they are attached
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`are pyn‘clidinn. piperidinn cur 111nmhnlinn [Ex lflflfi. at
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`4: 24-26]:
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`Ra: is H. {C1-C5)alkyl. (Cg-cgcyclcalkyl. phenyl. henzyl.
`
`nr phenethyl [Ex iii-38. at 4: 2?-28]:
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`17
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`17
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`IPR2017-01712
`Patent 8,815,830 B2
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`
`
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`Petitioner presents Table 3 to compare the substituents at each relevant
`position between P1/NP2 and challenged claim 1. Pet. 35–39; see also
`Ex. 1007, 3:16–4:33.
`According to Petitioner, the table above shows the comparison of
`substituents between disclosures in P1/NP2 and the challenged claim 1.
`Pet. 35, 55 (“Differences between the disclosure in NP3/NP2 and ’830
`patent claim 1 is the same as shown above in Table 3.”).
`Petitioner argues that “a combinatorial calculation of the number of
`substituents encompassed by R2, R3, R5, R6, and R7 in NP3/NP2 formula I
`(the R groups narrowed in ’830 patent claim 1) results in 7,441,875 classes
`of R group substituents from which the later claimed ’830 patent claim 1
`subgenus is derived.” Id. at 56 (citing Ex. 1011 ¶ 96, emphasis omitted), see
`also id. at 39–40 (citing Ex. 1011 ¶¶ 54–60, asserting the same regarding the
`substituents disclosed in P1). According to Petitioner:
`The ’830 patent subgenus selects one substituent (halo) out of 15
`possibilities for R2, one substituent (hydroxy) out of 15
`possibilities for R3, one substituent (amino acid) out of three
`possibilities for R5, two substituents [H or (C1-C6)alkyl] out of
`15 possibilities for R6, and two substituents [H or (C1-C6)alkyl]
`out of 15 possibilities for R7. This is akin to selecting seven trees
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`IPR2017-01712
`Patent 8,815,830 B2
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`from a forest of 7,441,875 trees, with no guidance in P1 [or NP2]
`pointing the POSA to those seven particular trees.
`Pet. 40 (citing Ex. 1011 ¶ 61, emphases omitted), 56–57 (citing Ex. 1011
`¶ 97).
`
`Petitioner asserts that, although challenged claim 1 narrows the scope
`of substituents disclosed in P1 and NP2, there are no blaze marks in either
`P1 or NP2 “to guide a POSA to select those specific classes of R group
`substituents from the myriad possibilities in the broad genera disclosed” in
`P1 or NP2. Id. at 56 (citing Ex. 1011 ¶ 95), see also id. at 39 (citing
`Ex. 1011 ¶ 53). For example, Petitioner points out that neither application
`“disclose[s] preferred definitions for each R group substituent in Formula I,”
`or “teach[es] any improved properties, such as improved antiviral or
`anticancer activity for compounds with the R groups selected in the ’830
`patent claim 1 subgenus.” Id. at 40.
`Instead, Petitioner argues that P1 and NP2 actually direct a POSA to
`select other classes of R group substituents because the only compounds
`“useful in the methods of the invention” have hydroxy—not halo, as in
`challenged claim 1—at R2, and the only synthetic scheme for making the
`compounds in P1 and NP2 is one that results in hydroxy at R2. Id. at 41, 43
`(citing Ex. 1008, Figs. 1, 3), 57, 59 (citing Ex. 1007, Figs 1, 3); see also
`Ex. 1007, 7:9–14; Ex. 1008, 7:9–14.
`In addition, P1 and NP2 disclose that compounds containing an
`electropositive group at the 2'-position “are especially good substrates for
`hHINT1.” Ex. 1007, 3:11–14; Ex. 1008, 3:9–11. Petitioner argues that
`halogens, such as fluorine, are electronegative, not electropositive. Pet. 43–
`44, 59–60 (citing Ex. 1011 ¶ 103). According to Petitioner, “fluorine is the
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`IPR2017-01712
`Patent 8,815,830 B2
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`most electronegative element in the periodic table.” Id. at 44 (citing
`Ex. 1011 ¶¶ 66–67; Ex. 1021, emphasis omitted). Thus, Petitioner concludes
`the teachings in P1 and NP2 that “electropositive groups at the 2'-position
`are favored for phosphoramidate hydrolysis” would lead a POSA in a
`different direction from selecting halo at R2. Id. (citing Ex. 1011 ¶ 68),
`60 (citing Ex. 1011 ¶ 104).
`Petitioner further contends that neither P1 nor NP2 discloses “any
`representative species or subgenus that falls within the scope of ’830 patent
`claim 1.” Id. at 42, 57. Nor do they contain any examples of compounds that
`fall within the scope of that subgenus. Id. at 42–43, 57. In P1, all
`“representative compounds” have hydroxy at R2. Id. at 43 (citing Ex. 1008,
`Figs. 1, 3); see also Ex. 1008, 7:9–13 (stating compounds in Figures 1 and 3
`are “representative compounds” and compounds “useful in the methods of
`the invention”). NP2 discloses 24 additional “[r]epresentative compounds.”
`Ex. 1007, 26:22–27:7. According to Petitioner, all but one of these
`compounds have hydroxy at R2. Pet. 59. The only one left contains
`hydrogen, again, not halo, at R2. Id. It also has hydroxy, and not hydrogen or
`(C1-C6)alkyl, as required in challenged claim 1, at R6. Id. Thus, Petitioner
`concludes all the representative compounds in P1 and NP2 are outside the
`scope of challenged claim 1. Id. at 43 (citing Ex. 1011 ¶¶ 63–65), 59 (citing
`Ex. 1011 ¶¶ 101–102).
`Petitioner acknowledges that both P1 and NP2 contain numerous
`multiple dependent claims. Id. at 44, 60. According to Petitioner, however,
`there is nothing in P1 or NP2 singling out the claimed classes of R group
`substituents as preferred, and there are “no blaze marks directing a POSA to
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`IPR2017-01712
`Patent 8,815,830 B2
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`select” the R group substituents falling within the scope of challenged
`claim 1 subgenus from the many R groups recited in other claims.
`Id. at 44–45 (citing Ex. 1008, 23–24; Ex. 1011 ¶¶ 69–73), 60–62 (citing
`Ex. 1007, 40–41; Ex. 1011 ¶¶ 105–109).
`For P1, Petitioner points out the relevant claims “are all multiple
`dependent claims which themselves depend from large numbers of other
`multiple dependent claims.” Id. at 45. For example, claim 47 recites “[t]he
`compound of any one of claims 1–46, wherein R7 is hydrogen or
`(C1-C6)alkyl.” Id. at 45–46 (citing Ex. 1008, 27, emphasis omitted).
`Petitioner argues “[t]here are no blaze marks in this claim or any of the
`claims of P1 specifically pointing to the substituents recited in ’830 patent
`claim 1.” Id. at 46 (citing Ex. 1011 ¶ 74). Thus, according to Petitioner:
`[E]ven if claim 47 were to be understood by a POSA as
`demonstrating a “preference” for R7 as hydrogen or (C1-C6)alkyl,
`claim 47 still represents 70,875 classes of R group substituents
`for R2, R3, R5, and R6 with no blaze marks in P1 to direct the
`POSA to the classes of R group substituents later claimed in the
`’830 patent claim 1 subgenus.
`Id. at 46 (citing Ex. 1011 ¶ 74).
`To reach challenged claim 1, Petitioner argues, it would require
`hindsight to pick, among 46 claim possibilities in claim 47, four claims
`(claims 13, 21, 33, and 45), without any direction in P1’s disclosure. Id.
`Given the multiple classes of substituents for each of R2, R3 and R5, “and the
`lack of blaze marks in P1 to direct a POSA to select R2 as halo, R3 as
`hydroxy, and R5 as amino acid (as specifically claimed in the ’830 patent
`claim 1 subgenus) from the 7,441,875 other possible combinations,”
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`IPR2017-01712
`Patent 8,815,830 B2
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`Petitioner concludes that the applicant “was not in possession of the ’830
`patent claim 1 subgenus as of the filing date of P1.” Id. at 47.
`For NP2, Petitioner points out that it differs from P1 in the
`organization of the multiple dependent claims. Id. at 61. This, according to
`Petitioner, “precludes combinations that would result in the classes of R
`group substituents later claimed in the ’830 patent.” Id. at 65 (emphasis
`omitted). Thus, Petitioner concludes “even in hindsight[,] a POSA would not
`be able to combine the classes of R group substituents later claimed in the
`’830 patent claim 1 subgenus from the disclosures and claims of . . . NP2.”
`Id. (citing Ex. 1011 ¶ 119).
`For similar reasons, Petitioner also contends that neither P1 nor NP2
`provides written description support for the challenged dependent claims.
`Id. at 50–53 (citing Ex. 1011 ¶¶ 84–90), 66–69 (Ex. 1011 ¶¶ 122–131).
`According to Petitioner, “there are no ‘preferences’ or other teachings” in P1
`or NP2 that “would provide direction to a POSA, with no foreknowledge of
`the later-claimed ’830 patent subgenus, to select the narrowed R2, R3, R5, R6,
`and R7 groups claimed in the ’830 patent dependent claims.” Id. at 50 (citing
`Ex. 1011 ¶ 84), 66 (citing Ex. 1011 ¶ 122).
`In sum, Petitioner concludes
`Given the enormous size of the genera of compounds disclosed
`in [P1 and] NP2, the lack of blaze marks that would direct a
`POSA to the specifically narrowed R groups claimed in the ’830
`patent, combined with the teachings in [P1 and] NP2 that would
`direct a POSA to select something other than the later claimed R
`groups, a POSA would have understood that Applicant was not
`in possession of the subject matter of the ’830 patent claims.
`Id. at 69 (citing Ex. 1011 ¶ 132), see also id. at 53–54 (citing Ex. 1011 ¶ 91).
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`IPR2017-01712
`Patent 8,815,830 B2
`
`
`Patent Owner’s Arguments
`Patent Owner argues that Petitioner overstates the number of possible
`combinations in NP2’s broadest genus because it ignores (1) the Polar
`Proviso,4 and (2) “‘hydrogen or (C1-C6)alkyl’ was of special interest at R6
`and R7.” PO Res
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