Trials@uspto.gov
`571.272.7822
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` Paper No. 10
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` Entered: July 27, 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.
`____________
`
`Case IPR2018-00126
`Patent 9,284,342 B2
`____________
`
`
`Before ERICA A. FRANKLIN, GRACE KARAFFA OBERMANN, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
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`
`
`
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`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
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`571.272.7822
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`
`
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` Paper No. 10
`
` Entered: July 27, 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.
`____________
`
`Case IPR2018-00126
`Patent 9,284,342 B2
`____________
`
`
`Before ERICA A. FRANKLIN, GRACE KARAFFA OBERMANN, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`IPR2018-00126
`Patent 9,284,342 B2
`
`
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`
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`I. INTRODUCTION
`
`Petitioner, Initiative for Medicines, Access & Knowledge (I-MAK),
`
`Inc., requests reconsideration of the Board’s decision (Paper 7, “Dec.”)
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`denying institution of inter partes review of claims 1–4 of U.S. Patent
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`No. 9,284,342 B2 (Ex. 1001, “the ’342 patent”). Paper 8 (“Req. Reh’g).
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`For the reasons discussed below, we deny the request for rehearing.
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`II. DISCUSSION
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`When rehearing a decision on a petition, the Board reviews the
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`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
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`discretion occurs when a “decision was based on an erroneous conclusion of
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`law or clearly erroneous factual findings, or . . . a clear error of judgment.”
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`PPG Indus. Inc. v. Celanese Polymer Specialties Co., Inc., 840 F.2d 1565,
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`1567 (Fed. Cir. 1988) (citations omitted). A request for rehearing “must
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`specifically identify all matters the party believes the Board misapprehended
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`or overlooked, and the place where each matter was previously addressed.”
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`37 C.F.R. § 42.71(d).
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`The Board did not overlook or misapprehend Petitioner’s arguments;
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`the Board considered them, but was not persuaded by them. We briefly
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`address Petitioner’s contentions below.
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`Analysis
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`Petitioner argues that “the Board misapprehended or overlooked
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`Petitioner’s evidence of motivation to make alternative crystalline forms that
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`would lead a POSA to the ’342 patent’s claims.” See Req. Reh’g 1–3. In
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`making that argument, Petitioner points to one section of the Decision
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`addressing Petitioner’s argument that “a POSA would be able to prepare the
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`2
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`IPR2018-00126
`Patent 9,284,342 B2
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`Sp-4 compound with such 2Ɵ-reflections.” Id. at 1–2, citing Dec. 17.1 As
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`fully addressed in the Decision, that argument that a POSA could have
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`prepared the Sp-4 compound with such 2Ɵ-reflections is unpersuasive. Dec.
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`11–12. In further advancing its argument regarding motivation to make
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`alternative crystalline forms, Petitioner also cites to excerpts from the
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`Declaration of Dr. Fortunak (Ex. 1002), but fails to identify where in the
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`Petition those matters were addressed. See 37 C.F.R. § 42.71(d). Moreover,
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`contrary to Petitioner’s argument on rehearing, the Board considered
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`Petitioner’s “evidence of motivation to pursue alternative crystalline forms”
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`(Req. Reh’g 1), but found it unpersuasive. See, e.g., Dec. 9, 11, 13, and 15.
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`Petitioner also argues that the Board ignored, and gave no weight to,
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`Dr. Fortunak’s opinions. Req. Reh’g 3–4. To the contrary, the Board
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`considered Dr. Fortunak’s declaration and accorded it appropriate weight.
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`The fact that the Decision points out that Dr. Fortunak’s statement was
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`verbatim to that of the Petition (id., citing Dec. 13) does not mean the Board
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`ignored Dr. Fortunak’s testimony; rather, it shows that the testimony was not
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`overlooked.
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`Petitioner further objects to the Board’s alleged “criticism of Dr.
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`Fortunak’s testimony” because the Board indicated that certain statements in
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`the Fortunak declaration, relied upon in the Petition, were made “without
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`citing evidentiary support.” Req. Reh’g 4. Petitioner cites to pages 9, 10,
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`13, and 15 of the Decision, which refer to Petitioner’s citations to paragraphs
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`111–113, 137, 147, and 158 of Dr. Fortunak’s declaration. Id. In each
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`instance, however, we identify a statement in the Petition that is supported
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`
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`1The correct cite to the Decision is Dec. 11.
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`3
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`IPR2018-00126
`Patent 9,284,342 B2
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`by a citation to a paragraph in Dr. Fortunak’s declaration that directs us to no
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`additional evidentiary support beyond that cited or discussed in the
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`statement. Each of those paragraphs merely repeats the statement in the
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`Petition. Petitioner directs us to no instance in which we misapprehended or
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`overlooked evidentiary support identified in paragraphs 111–113, 137, 147,
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`and 158 of Dr. Fortunak’s declaration. Req. Reh’g 4.
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`
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`III. CONCLUSION
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`For the foregoing reasons, we did not abuse our discretion in denying
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`institution of inter partes review of claims 1–4 of U.S. Patent No. 9,284,342
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`B2. Accordingly, Petitioner’s request for rehearing is denied.
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`4
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`IPR2018-00126
`Patent 9,284,342 B2
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`PETITIONER:
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`Daniel Ravicher
`dan@ravicher.com
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`PATENT OWNER:
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`David Cavanaugh
`david.cavanaugh@wilmerhale.com
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`Emily Whelan
`emily.whelan@wilmerhale.com
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`Dorothy Whelan
`whelan@fr.com
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`Mike Kane
`kane@fr.com
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`Chad Shear
`shear@fr.com
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`5
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