Trials@uspto.gov Paper No. 10
`571.272.7822
` Filed: October 3, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INITIATIVE FOR MEDICINES, ACCESS & KNOWLEDGE (I-MAK), INC.,
`Petitioner,
`
`v.
`
`GILEAD PHARMASSET LLC,
`Patent Owner.
`____________
`
`IPR2018-00123
`Patent 8,735,372 B2
`____________
`
`
`
`Before TONI R. SCHEINER, GRACE KARAFFA OBERMANN, and
`WESLEY B. DERRICK, Administrative Patent Judges.
`
`DERRICK, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
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`571.272.7822
` Filed: October 3, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INITIATIVE FOR MEDICINES, ACCESS & KNOWLEDGE (I-MAK), INC.,
`Petitioner,
`
`v.
`
`GILEAD PHARMASSET LLC,
`Patent Owner.
`____________
`
`IPR2018-00123
`Patent 8,735,372 B2
`____________
`
`
`
`Before TONI R. SCHEINER, GRACE KARAFFA OBERMANN, and
`WESLEY B. DERRICK, Administrative Patent Judges.
`
`DERRICK, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-00123
`Patent 8,735,372 B2
`
`
`I. INTRODUCTION
`
`Initiative for Medicines, Access & Knowledge (I-MAK), Inc.
`
`(“Petitioner”) filed a Petition (Paper 2 (“Pet.”)) to institute an inter partes
`
`review of claims 1 and 2 of U.S. Patent No. 8,735,372 B2 (Ex. 1001 (“the
`
`’372 patent”)). Gilead Pharmasset LLC (“Patent Owner”) filed a
`
`Preliminary Response. Paper 6 (“Prelim. Resp.”). Having considered the
`
`Petition, the Preliminary Response, and the evidence of record, and applying
`
`the standard set forth in 35 U.S.C. § 314(a), which requires that Petitioner
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`demonstrate a reasonable likelihood that it would prevail with respect to at
`
`least one challenged claim; we denied Petitioner’s request and did not
`
`institute an inter partes review. Paper 7, 12 (“Decision” or “Dec.”).
`
`Petitioner filed a Request for Rehearing (Paper 8 (“Reh’g Req.”)),
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`requesting reconsideration of the Decision denying institution
`
`of inter partes review. Petitioner contends that we “misapprehended or
`
`overlooked that Sofia (Ex. 1012) is a printed publication.” Reh’g Req. 1.
`
`We have considered Petitioner’s Request for Rehearing, and, for the
`
`reasons set forth below, Petitioner’s Request is denied.
`
`
`
`II. STANDARD OF REVIEW
`
`37 C.F.R. § 42.71(d) provides that:
`
`A party dissatisfied with a decision . . . may file a request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each
`
`2
`
`
`
`IPR2018-00123
`Patent 8,735,372 B2
`
`
`matter was previously addressed in a motion, opposition, or a
`reply.
`
`See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012).
`
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
`
`panel will review the decision for an abuse of discretion.” An abuse of
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`discretion occurs when a “decision was based on an erroneous conclusion of
`
`law or clearly erroneous factual findings, or . . . a clear error of judgment.”
`
`PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565,
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`1567 (Fed. Cir. 1988) (citations omitted).
`
`
`
`III. DISCUSSION
`
`Petitioner contends that “Patent Owner has never disputed that Sofia
`
`is a printed publication as of September 2007” and that “[t]he Board also
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`did not dispute that Sofia was a printed publication” in “related matters
`
`[IPR2018-00119 and IPR2018-00121] where Sofia is also of record.” Reh’g
`
`Req. 1. Petitioner further maintains that our finding “that Sofia is not a
`
`printed publication . . . stands alone and contradicts both Patent Owner’s
`
`implicit concessions and the Board’s previous findings that it is.” Id.
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`Petitioner also files new exhibits (Exs. 1014–1017) with the Request
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`and states that it “will seek leave to submit . . . [further] supplemental
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`evidence.” Id. Petitioner relies on the newly submitted exhibits to support
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`Petitioner’s assertion—first raised in its Request—that “Sofia was published
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`on Patent Owner’s own website by at least October 5, 2007” (Reh’g Req. 1
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`(citing Ex. 1014)) or to document its efforts, subsequent to our Decision, to
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`obtain such evidence or a stipulation by Patent Owner (Ex. 1015–1017).
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`3
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`IPR2018-00123
`Patent 8,735,372 B2
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`As explained in the Decision, Petitioner failed to meet the threshold
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`showing required for purposes of institution where there was neither
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`evidence indicating that Sofia was published in print or electronic form, nor
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`a showing as to the facts and circumstances of its putative disclosure as a
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`poster necessary to identify it as a printed publication. Dec. 8–11.
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`Petitioner’s contention that Patent Owner implicitly conceded Sofia’s status
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`as a printed publication, by not contesting the issue in the Preliminary
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`Response, is misplaced. A patent owner is under no obligation to file a
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`preliminary response, and a failure to raise an issue in a preliminary
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`response does not establish a waiver or an admission of fact. On the
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`contrary, Petitioner bears the burden of proof from the onset of sufficiently
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`establishing facts to demonstrate a likelihood of prevailing at trial with
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`respect to at least one challenged patent claim. Here, the Petition failed to
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`direct us to evidence that shows sufficiently that Sofia constitutes a printed
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`publication—any absence of argument or evidence in the Preliminary
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`Response does not improve the showing made in the Petition. See, e.g.,
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`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016)
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`(citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to
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`identify “with particularity” by reference to the record “the evidence that
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`supports the grounds for the challenge to each claim”)).
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`Petitioner’s further contention that the Board’s failures to dispute that
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`Sofia is a printed publication in earlier IPR2018-00119 and IPR2018-00121,
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`in effect, constitutes implied findings by the Board that it is a printed
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`publication (Reh’g Req. 1), is offered without any supporting legal authority
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`(see generally id.). The law of the case doctrine, however, is instructive in
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`that while it “expresses the practice of courts generally to refuse to reopen
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`4
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`IPR2018-00123
`Patent 8,735,372 B2
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`what has been decided,” Messinger v. Anderson, 225 U.S. 436, 444 (1912),
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`it “is limited to issues that were actually decided, either explicitly or by
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`necessary implication, in the earlier litigation,” Toro Co. v. White Consol.
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`Indus., Inc., 383 F.3d 1326, 1335 (Fed. Cir. 2004). In the prior proceedings
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`cited by Petitioner, Sofia was determined to be unavailable as prior art
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`because it was later in time than a priority application. IPR2018-00119,
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`Paper 7, 10–12; IPR2018-00121, Paper 10, 11–12. That determination in the
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`prior proceedings, however, is not a finding that Sofia was a printed
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`publication, nor is it contrary to finding that it is not a printed publication.
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`As to Petitioner’s further arguments, a request for rehearing is not an
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`opportunity to develop new arguments or direct us to new or additional
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`evidence. Petitioner’s contentions and arguments grounded on newly
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`submitted Exhibits 1015–1017 are, accordingly, untimely. If Petitioner
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`wanted us to consider this, and any further, evidence in determining whether
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`Petitioner made a threshold showing that Sofia is a prior art printed
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`publication, it was incumbent on Petitioner to make those arguments and
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`point us to that evidence in the Petition.
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`On this record, Petitioner neither persuades us that we overlooked or
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`misapprehended any matter, nor sufficiently shows that denying inter partes
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`review of claims 1 and 2 represents an abuse of discretion.
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`
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`IV. ORDER
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`Accordingly, it is hereby:
`
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`5
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`
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`IPR2018-00123
`Patent 8,735,372 B2
`
`PETITIONER:
`
`Daniel B. Ravicher
`Ravicher Law Firm PLLC
`dan@ravicher.com
`
`
`PATENT OWNER:
`
`Dorothy P. Whelan
`Michael J. Kane
`W. Chad Shear
`FISH & RICHARDSON P.C.
`whelan@fr.com
`kane@fr.com
`shear@fr.com
`
`David L. Cavanaugh
`Emily R. Whelan
`WILMER HALE
`david.cavanaugh@wilmerhale.com
`emily.whelan@wilmerhale.com
`
`
`
`
`
`6
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