Case: 21-2168 Document: 35 Page: 1 Filed: 03/06/2023
`
`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA,
`Appellant
`
`v.
`
`GILEAD SCIENCES, INC.,
`Appellee
`______________________
`
`2021-2168
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2017-
`01712.
`
`______________________
`
`Decided: March 6, 2023
`______________________
`
`EDGAR HAUG, Haug Partners LLP, New York, NY, ar-
`gued for appellant. Also represented by MICHAEL A.
`ALBERT, EDWARD R. GATES, RICHARD GIUNTA, GERALD B.
`HRYCYSZYN, NATHAN R. SPEED, CHARLES T. STEENBURG,
`Wolf Greenfield & Sacks, PC, Boston, MA.
`
` JOHN SCOTT MCBRIDE, Bartlit Beck LLP, Chicago, IL,
`argued for appellee. Also represented by NEVIN M.
`GEWERTZ, REBECCA HORWITZ; MEG E. FASULO, Denver, CO.
` ______________________
`
`Before LOURIE, DYK, and STOLL, Circuit Judges.
`
`

`

`Case: 21-2168 Document: 35 Page: 2 Filed: 03/06/2023
`
`2
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA v.
` GILEAD SCIENCES, INC.
`
`LOURIE, Circuit Judge.
`The Regents of the University of Minnesota (“Minne-
`sota”) appeal from a final written decision of the U.S. Pa-
`tent and Trademark Office Patent Trial and Appeal Board
`(“the Board”) holding that claims 1−9, 11−21, and 23−28 of
`U.S. Patent 8,815,830 are unpatentable as anticipated by
`the asserted prior art. Gilead Scis., Inc. v. Regents of the
`Univ. of Minn., No. IPR2017-01712, 2021 WL 2035126
`(P.T.A.B. May 21, 2021) (“Decision”). For the following rea-
`sons, we affirm.
`
`BACKGROUND
`This appeal pertains to an inter partes review (“IPR”)
`
`in which Gilead Sciences, Inc. (“Gilead”) filed a petition
`challenging claims of the ’830 patent directed to phospho-
`ramidate prodrugs of nucleoside derivatives that prevent
`viruses from reproducing or cancerous tumors from grow-
`ing. Representative claim 1 is presented 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)alka-
`noyloxy,
`trifluoromethyl,
`hydroxy(C1-C6)al-
`kyl, -(CH2)1-4P(=O)(ORw)2, aryl, aryl(C1-C6)alkyl, or
`NRxRy;
`
`

`

`Case: 21-2168 Document: 35 Page: 3 Filed: 03/06/2023
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA v.
`GILEAD SCIENCES, INC.
`
`3
`
`R2 is halo;
`R6 and R7 are independently H or (C1-C6)alkyl;
`R3 is hydroxy;
`R4 is hydrogen, (C1-C6)alkyl, (C3-C6)cycloalkyl,
`aryl, 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 to-
`gether 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, trifluorome-
`thyl, azido, cyano, oxo (=O), (C1-C6)alkyl, (C3-C6)cy-
`cloalkyl,
`(C3-C6)cycloalkyl(C1-C6)alkyl,
`(C1-C6)alkyl-S-(C1-C6)alkyl-, aryl, heteroaryl, al-
`kyl(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 se-
`lected from the group consisting of halo, hydroxy,
`(C1-C6)alkyl,
`(C3-C6)cycloalkyl,
`(C1-C6)alkoxy,
`(C3-C6)cycloalkyloxy, (C1-C6)alkanoyl, (C1-C6)alka-
`noyloxy, trifluoromethyl, trifluoromethoxy, nitro,
`cyano, and amino;
`or a pharmaceutically acceptable salt thereof.
`
`

`

`Case: 21-2168 Document: 35 Page: 4 Filed: 03/06/2023
`
`4
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA v.
` GILEAD SCIENCES, INC.
`
`’830 patent at col. 19 ll. 2–47.
` Other claims relate to various subgenera of claim 1, as
`well as administration of the described compounds to treat
`viral infections; but, as the patentability of all the claims
`depends on the patentability of claim 1, they need not be
`recited or described further here.
`Falling within the genus of claim 1 is sofosbuvir, an
`FDA-approved drug marketed by Gilead for treating
`chronic hepatitis C infections. J.A. at 142−43. If the ’830
`patent were found to be valid, it would be a barrier to the
`sale of sofosbuvir without authority. Gilead thus peti-
`tioned for IPR of claims 1−9, 11−21, and 23−28, arguing
`that these claims were not entitled to their claimed priority
`date and were therefore anticipated by U.S. Patent Appli-
`cation Publication 2010/0016251 to Sofia (“Sofia”), which
`was published on January 21, 2010. J.A. at 389−465. Sofia
`is a patent publication owned by Gilead, but that fact is of
`no moment to our decision. During the review, the parties
`agreed that Sofia discloses every limitation of each chal-
`lenged claim. Decision at *5. The result of the IPR thus
`hinged on Sofia’s prior art status and the critical date of
`the ’830 patent.
`The March 28, 2014 application that issued as the ’830
`patent claims priority from four applications filed on the
`dates outlined below. The publication date of Sofia is also
`included in the table below for ease of comparison.
`Description
`Date
`U.S. Provisional App. 60/634,677 (“P1”) Dec. 9, 2004
`Int. App. PCT/US2005/044442 (“NP2”)
`Dec. 8, 2005
`U.S. Patent App.11/721,325 (“NP3”)
`June 8, 2007
`Sofia Publication
`Jan. 21, 2010
`U.S. Patent App. 13/753,252 (“NP4”)
`Jan. 29, 2013
`In its analysis of the ’830 patent’s priority claims, the
`Board found that NP4 was filed after Sofia was published,
`and that NP3 contained the same disclosure as NP2. The
`
`

`

`Case: 21-2168 Document: 35 Page: 5 Filed: 03/06/2023
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA v.
`GILEAD SCIENCES, INC.
`
`5
`
`Board thus focused its priority analysis on the disclosures
`of NP2 and P1, each of which was filed before Sofia was
`published. Decision at *5. (As NP2 and P1 contain similar
`disclosures in most respects pertinent here, we will refer to
`them henceforth as NP2-P1 without further distinction, ex-
`cept in discussing a claim unique to P1.)
`The Board held that NP2-P1 failed to provide written
`description sufficient to support the ’830 patent’s priority
`claim. According to the Board, these documents contained
`neither ipsis verbis support nor sufficient blaze marks to
`guide the skilled artisan to the claims of the ’830 patent.
`Thus, the challenged claims were not entitled to a priority
`date earlier than their own filing date of March 28, 2014.
`Decision at *16−17. They were thus anticipated by Sofia.
`(The Board did not, in fact, consider whether NP4, filed on
`January 29, 2013, provided written description support for
`the claims of the ’830 patent. However, for reasons that will
`become clear from the discussion below, that does not mat-
`ter to our resolution.)
`Minnesota appealed. We have jurisdiction under
`28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141(c).
`DISCUSSION
`We review the Board’s legal determinations de novo, In
`re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
`Board’s factual findings for substantial evidence, In re
`Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding
`is supported by substantial evidence if a reasonable mind
`might accept the evidence as adequate to support the find-
`ing. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
`Minnesota raises three issues on appeal. First, Minne-
`sota contends that the Board erred in holding that NP2-P1
`do not show a written description of what is claimed in the
`’830 patent. Minnesota also asserts that the Board ran
`afoul of requirements set forth in the Administrative Pro-
`cedure Act (“APA”). Last, Minnesota asserts that it is a
`
`

`

`Case: 21-2168 Document: 35 Page: 6 Filed: 03/06/2023
`
`6
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA v.
` GILEAD SCIENCES, INC.
`
`sovereign state entity immune from IPR. We address each
`argument in turn.
`
`I.
`The written description requirement of 35 U.S.C. § 112
`reflects the basic premise of the patent system, viz., that
`one discloses an invention and, if it also fulfills the other
`requirements of the statute, one obtains a patent. Quid pro
`quo. Judicial gloss in the case law reflects the need that
`the disclosure show that one actually made the invention
`that one is claiming, i.e., that it possessed the invention as
`claimed. “The purpose of the written description require-
`ment 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).
`Written description of an invention claimed as a genus
`of chemical compounds, as here, raises particular issues be-
`cause, as we have held, written description of a broad ge-
`nus requires description not only of the outer limits of the
`genus but also of either a representative number of mem-
`bers of the genus or structural features common to the
`members of the genus, in either case with enough precision
`that a relevant artisan can visualize or recognize the mem-
`bers of the genus. See Ariad Pharms., Inc. v. Eli Lilly &
`Co., 598 F.3d 1336, 1350−52 (Fed. Cir. 2010) (en banc). A
`broad outline of a genus’s perimeter is insufficient. See id.
`But Minnesota is not arguing in this case that it de-
`scribed a sufficient number of species to constitute a writ-
`ten description of the claimed subgenus.
` Rather,
`Minnesota asserts that its earlier NP2-P1 applications lit-
`erally described, or provided blaze marks to, the subgenus
`of the ’830 claims in its broad outlines. The Board held that
`they did not, and we agree.
`The issue here comes down to whether the Board’s find-
`ing that the later-filed ’830 patent is not entitled to the fil-
`ing dates of the earlier filed NP2-P1 applications is
`
`

`

`Case: 21-2168 Document: 35 Page: 7 Filed: 03/06/2023
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA v.
`GILEAD SCIENCES, INC.
`
`7
`
`supported by substantial evidence. 35 U.S.C. § 120 sets
`forth requirements that must be met in order for a patent
`application to benefit from the filing date of an earlier ap-
`plication. To receive “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. Am. Airlines, Inc., 107 F.3d
`1565, 1571 (Fed. Cir. 1997). Original disclosure may not
`be relied upon unless it “constitute[s] a full, clear, concise
`and exact description” of the invention claimed in the pa-
`tent to one of ordinary skill. In re Wertheim, 646 F.2d 527,
`538–39 (CCPA 1981).
`Evaluating whether the written description require-
`ment is satisfied involves “an objective inquiry into the four
`corners of the specification from the perspective of a person
`of ordinary skill in the art.” Ariad Pharms., 598 F.3d at
`1351. For genus claims, which are present here, we have
`looked for blaze marks within the disclosure that guide at-
`tention to the claimed species or subgenus. In re Ruschig,
`379 F.2d 990, 994–95 (CCPA 1967); Fujikawa v. Wattana-
`sin, 93 F.3d 1559, 1571 (Fed. Cir. 1996); see also Purdue
`Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1326–27
`(Fed. Cir. 2000). (Here, the parties use language such as
`genus and subgenus to refer to the various disclosures in-
`volved in this inquiry. The disclosure of NP2-P1, being
`broader than claim 1 of the ’830 patent, has a relationship
`of genus to the narrower subgenus of the ’830 patent
`claims. We will use this language of the parties.)
`The primary considerations in a written description
`analysis are factual and must be assessed on a case-by-case
`basis. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562
`(Fed. Cir. 1991). We thus review the Board’s decision re-
`garding written description for substantial evidence. Gart-
`side, 203 F.3d at 1316.
`
`

`

`Case: 21-2168 Document: 35 Page: 8 Filed: 03/06/2023
`
`8
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA v.
` GILEAD SCIENCES, INC.
`
`A.
`The Board first evaluated whether NP2-P1 provided an
`ipsis verbis disclosure of the subgenus of challenged claim
`1 of the ’830 patent and found that neither application
`does. Minnesota argues on appeal that P1’s claim 47 de-
`scribes challenged claim 1’s exact subgenus. It reasons as
`follows:
`Claim 47, like other claims set forth in P1, defines a
`potential subgenus of substituents for R7. P1 claim 47 re-
`cites:
`47. The compound of any one of claims 1–46
`wherein R7 is hydrogen or (C1-C6)alkyl.
`J.A. at 629; see also, e.g., id. (defining R7 in claim 48 instead
`(C3-C6)cycloalkyl,
`(C1-C6)alkyl,
`as
`“halo, hydroxy,
`(C1-C6)alkoxy,
`(C3-C6)cycloalkyloxy,
`(C1-C6)alkanoyl,
`(C1-C6)alkanoyloxy,
`trifluoromethyl,
`azido,
`-N(Rz)C(=O)N(Raa)(Rab),
`-N(Rz)C(=O)ORac,
`or
`cyano,
`NRadRae”).
` Minnesota asserts that P1 claim 47, combined with P1
`claim 45 (with its disclosure of R6 substituents), P1 claim
`33 (with its disclosure of R5 substituents), P1 claim 21 (with
`its disclosure of the R3 substituent), P1 claim 13 (with its
`disclosure of R2 substituents), P1 claim 2 (with its disclo-
`sure of R1 substituents), and P1 claim 1 (with its disclosure
`of R4 substituents and of X), provides an ipsis verbis disclo-
`sure of the subgenus claimed in the ’830 patent. Like the
`Board, we do not agree. Following this maze-like path, each
`step providing multiple alternative paths, is not a written
`description of what might have been described if each of
`the optional steps had been set forth as the only option.
`This argument calls to mind what Yogi Berra, the Yankee
`catcher, was reported to have said: “when one comes to a
`fork in the road, take it.” That comment was notable be-
`cause of its indeterminacy, its lack of direction. Similarly,
`here, all those optional choices do not define the intended
`
`

`

`Case: 21-2168 Document: 35 Page: 9 Filed: 03/06/2023
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA v.
`GILEAD SCIENCES, INC.
`
`9
`
`result that is claim 1 of the ’830 patent.
`Moreover, Minnesota’s argument is akin to that re-
`jected in Fujikawa, where the applicant “persist[ed] in ar-
`guing that its proposed count [wa]s disclosed ipsis verbis in
`Wattanasin’s application.” Fujikawa, 93 F.3d at 1571. As
`the court explained in Fujikawa:
`The basis for this contention seems to be that Wat-
`tanasin lists [a later-claimed substituent] as one
`possible moiety for R in his disclosure of the genus.
`Clearly, however, just because a moiety is listed as
`one possible choice for one position does not mean
`there is ipsis verbis support for every species or
`sub-genus that chooses that moiety. Were this the
`case, a “laundry list” disclosure of every possible
`moiety for every possible position would constitute
`a written description of every species in the genus.
`This cannot be because such a disclosure would not
`“reasonably lead” those skilled in the art to any
`particular species.
`
`Id.
`The same is true here. The claims of P1 recite a com-
`
`pendium of common organic chemical functional groups,
`yielding a laundry list disclosure of different moieties for
`every possible side chain or functional group. Indeed, the
`listings of possibilities are so long, and so interwoven, that
`it is quite unclear how many compounds actually fall
`within the described genera and subgenera. Thus, we af-
`firm the Board’s decision that there is no ipsis verbis writ-
`ten description disclosure provided by P1 claim 47
`sufficient to support the ’830 patent’s claims.
`B.
`As the Board noted in its final written decision, an ipsis
`verbis disclosure of a claimed subgenus is not necessary to
`satisfy the written description requirement of § 112. Fu-
`jikawa, 93 F.3d at 1570. Thus, the Board next turned its
`
`

`

`Case: 21-2168 Document: 35 Page: 10 Filed: 03/06/2023
`
`10
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA v.
` GILEAD SCIENCES, INC.
`
`attention to whether NP2-P1 provided sufficient blaze
`marks to provide written description support for the ’830
`patent claims. Decision at *9–10 (citing Ruschig, 379 F.2d
`at 994–95). As explained by the Board, “[t]hese blaze
`marks must be clear because ‘it is easy to bypass a tree in
`the forest, even one that lies close to the trail.’” Decision at
`*10 (citing Fujikawa, 93 F.3d at 1571).
`The Board concluded that, “[i]n this case, we find the
`point at which one must leave the trail to find the tree is
`not well marked in P1 and NP2. Thus, P1 and NP2 do not
`provide sufficient written description support for the sub-
`genus of challenged claim 1.” Decision at *10.
`After failing to establish that P1 claim 47 constitutes
`an ipsis verbis disclosure, Minnesota attempts to recast
`this claim as a blaze mark. But again, similar to Fujikawa,
`even if P1 claim 47 “blaze[s] a trail through the forest” that
`runs close by the later-claimed tree, the priority applica-
`tions “do[] not direct one to the proposed tree in particular,
`and do[] not teach the point at which one should leave the
`trail to find it.” Fujikawa, 93 F.3d at 1571. We conclude
`that the Board’s finding that NP2-P1 failed to provide suf-
`ficient blaze marks to support the ’830 patent’s priority
`claims was supported by substantial evidence.
`Minnesota further argues that the Board erred in fail-
`ing to consider the holdings in Ariad. In so doing, Minne-
`sota mischaracterizes Ariad as holding that merely
`“disclosing ‘structural features common to the members of
`[a] genus’ demonstrates possession of, and thereby sup-
`ports, the claimed genus.” Appellant’s Br. at 5. That is not
`what Ariad held.
`As the Board recognized, sufficiently describing a ge-
`nus under Ariad requires a description of a claimed genus
`disclosing either (1) “a representative number of species
`falling within the scope of the genus,” which the parties do
`not dispute is lacking here, or (2) “structural features com-
`mon to the members of the genus,” either of which must
`
`

`

`Case: 21-2168 Document: 35 Page: 11 Filed: 03/06/2023
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA v.
`GILEAD SCIENCES, INC.
`
`11
`
`enable “one of skill in the art [to] ‘visualize or recognize’ the
`members of the genus.” Decision at *4; Ariad, 598 F.3d at
`1350 (emphasis added). As indicated, the first requirement
`is not at issue here.
`As for the second, the Board addressed the question
`whether one of skill in the art would have been able to vis-
`ualize or recognize the members of the claimed genus by
`“search[ing] for blaze marks that guide a skilled artisan to
`the claimed subgenera.” Decision at *10. That was not er-
`ror. Regarding whether common structural features must
`exist between a claim and a putative priority disclosure,
`those features must constitute the near-entirety of the
`structures being compared. But the structures here are so
`extensive and varied that the structures of P1 claim 47,
`which, through its multiple dependencies, encompasses a
`significantly larger genus than that claimed in the ’830 pa-
`tent, are not sufficiently common to that of claim 1 of the
`’830 patent to provide written description support.
`Finding no adequate blaze marks, the Board concluded
`that NP2-P1 do not provide sufficient written description
`to support the ’830 patent claims. Because NP3 provides
`the same disclosure as NP2, it too does not provide suffi-
`cient written description to support the ’830 patent claims.
`The Board thus determined that the claims of the ’830 pa-
`tent were therefore entitled to a priority date no earlier
`than March 28, 2014, making Sofia prior art to them. Re-
`garding the Board’s failure to address NP4, that is of no
`consequence. Even if NP4 did provide written description
`support for the ’830 patent claims, that application was not
`filed until January 29, 2013, and Sofia was published on
`January 21, 2010. Sofia would still be prior art. As the
`parties did not dispute that Sofia discloses each and every
`limitation of the ’830 patent claims, the Board found that
`the challenged claims of the ’830 patent were anticipated
`by Sofia. We agree.
`
`

`

`Case: 21-2168 Document: 35 Page: 12 Filed: 03/06/2023
`
`12
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA v.
` GILEAD SCIENCES, INC.
`
`II.
`Minnesota next contends that the Board ran afoul of
`APA requirements in several respects. We review Board
`decisions for compliance with the APA, setting aside “ac-
`tions of the Board that are arbitrary, capricious, an abuse
`of discretion, or otherwise not in accordance with law.” In
`re Sullivan, 362 F.3d 1324, 1326 (Fed. Cir. 2004); 5 U.S.C.
`§ 706.
`First, Minnesota asserts that the Board failed to ad-
`dress key aspects of its expert’s testimony explaining why
`a skilled artisan would have understood NP2-P1 as de-
`scribing the claimed subgenus. According to Minnesota,
`this amounted to an APA violation. Gilead responds by as-
`serting that the Board did not ignore this testimony, and
`instead cited Minnesota’s expert more than a dozen times
`in its final written decision. It is within the discretion of
`the Board to weigh the evidence of record. Tiger Lily Ven-
`tures Ltd. v. Barclays Cap. Inc., 35 F.4th 1352, 1365−66
`(Fed. Cir. 2022); see also Shoes by Firebug LLC v. Stride
`Rite Child.’s Grp., LLC, 962 F.3d 1362, 1371 (Fed. Cir.
`2020) (“[I]t is not for us to second-guess the [Patent Trial
`and Appeal] Board’s assessment of the evidence.”). In this
`case, Minnesota appears to have wanted the Board to pro-
`vide an express “credibility determination or other fact-
`finding” concerning its expert’s testimony. Appellant’s Br.
`at 43. That is not required by the APA. Novartis AG v.
`Torrent Pharms. Ltd., 853 F.3d 1316, 1328 (Fed. Cir. 2017)
`(“The Board is not required to address every argument
`raised by a party or explain every possible reason support-
`ing its conclusion.” (cleaned up)). We find no abuse of dis-
`cretion or other action taken by the Board that is not in
`accordance with law.
`Minnesota next contends that the Board ignored a
`prior Board decision in a case involving a patent that Gil-
`ead owns that Minnesota views as facially inconsistent
`with this one. Gilead responds by asserting that that prior,
`
`

`

`Case: 21-2168 Document: 35 Page: 13 Filed: 03/06/2023
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA v.
`GILEAD SCIENCES, INC.
`
`13
`
`non-precedential final written decision, involving a differ-
`ent Board panel, considering a different patent and a dif-
`ferent record in a proceeding involving a different
`challenging party, finding different claims adequately sup-
`ported does not bind the Board to find written description
`support for the claims at issue here. We agree. The claims
`and alleged priority disclosures in that case are different
`from those here. See also Power Integrations, Inc. v. Semi-
`conductor Components Indus., LLC, 926 F.3d 1306, 1318
`(Fed. Cir. 2019) (“[N]onprecedential Board decisions . . . do
`not even bind other panels of the Board.”).
`Finally, Minnesota contends that the Board applied its
`own procedural requirements inconsistently and arbitrar-
`ily in a way that permitted Gilead to unfairly submit new
`argument at the Reply stage of the IPR. Gilead notes that
`the Board provided Minnesota with an opportunity to re-
`spond to any alleged new arguments and that Minnesota
`has not identified any error or prejudice in how the Board
`treated these arguments. We agree with Gilead and find
`no APA violation.
`
`III.
`Finally, Minnesota asserts that it is a sovereign state
`
`entity immune from IPR. Minnesota acknowledges that
`absent reversal en banc or by the Supreme Court, it is
`bound by the holding in Regents of the University of Minne-
`sota v. LSI Corp., 926 F.3d 1327 (Fed. Cir. 2019). Gilead
`responds that Minnesota had the opportunity to argue that
`sovereign immunity bars proceedings against it in the pre-
`vious Regents of the University of Minnesota proceeding, a
`case in which Gilead intervened. Gilead notes that this
`court has already rejected this argument and that the Su-
`preme Court declined to hear the case. Because this issue
`has been litigated to finality and determined on the merits,
`Minnesota is collaterally estopped from making an immun-
`ity argument here.
`
`

`

`Case: 21-2168 Document: 35 Page: 14 Filed: 03/06/2023
`
`14
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA v.
` GILEAD SCIENCES, INC.
`
`CONCLUSION
`We have considered Minnesota’s remaining arguments
`and do not find them persuasive. For the foregoing rea-
`sons, we affirm the Board’s final written decision holding
`that NP2 and P1 do not provide sufficient written descrip-
`tion to support the ’830 patent claims, and that Sofia there-
`fore anticipated these claims.
`AFFIRMED
`
`