Trials@uspto.gov
`571-272-7822
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`Paper 10
` Entered: January 22, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THERMO FISHER SCIENTIFIC INC.,
`Petitioner,
`
`v.
`
`THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
`Patent Owner.
`____________
`
`Case IPR2018-01347
`Patent 9,085,799 B2
`____________
`
`
`
`Before ERICA A. FRANKLIN, JAMES A. WORTH, and KRISTI L. R.
`SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`INTRODUCTION
`I.
`Thermo Fisher Scientific Inc. (“Petitioner”) filed a Petition for an
`inter partes review of claims 1, 3, 4, 6, and 7 of U.S. Patent No. 9,085,799
`B2 (“the ’799 patent,” Ex. 1001). Paper 2 (“Pet.”). The Regents of the
`University of California (“Patent Owner”) filed a Preliminary Response.
`Paper 8 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). We may not institute an
`inter partes review “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a).
`Applying those standards, and upon consideration of the information
`presented in the Petition and the Preliminary Response, we determine that
`Petitioner has not demonstrated a reasonable likelihood of success in
`proving that at least one claim of the ’799 patent is unpatentable.
`Accordingly, we do not institute an inter partes review of the challenged
`claims (1, 3, 4, 6, and 7) of the ’799 patent.
`A. Related Proceedings
`Petitioner and Patent Owner identify The Regents of the University of
`California v. Affymetrix, Inc., Case No. 3:17-cv-01394 (CASD) (“the district
`court litigation”), as a related matter under 37 C.F.R. § 42.8(b)(2). Pet. 53–
`54. Patent Owner states that the district court litigation involves the ’799
`patent. Paper 5, 1. Petitioner also petitioned for an inter partes review of
`U.S. Patent No. RE46,817 (“the ’817 reissue patent”). Pet. 54. The Board
`denied institution on December 3, 2018. See Thermo Fisher Scientific Inc.
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`v. The Regents of the University of California, Case IPR2018-01156 (PTAB
`Dec. 3, 2018) (Paper 10). The ’799 patent and the ’817 reissue patent share
`the same written description, and claim priority to the same priority
`documents. Paper 5, 1; Prelim. Resp. 40. Patent Owner identifies the
`following proceedings as related matters: IPR2018-01367, IPR2018-01368,
`IPR2018-01369, and IPR2018-01370. Paper 3, 1–2. Those related matters,
`involving the same parties and related patents, are at the pre-institution
`phase.
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`B. The ’799 patent
`The ’799 patent relates to a method for detecting and analyzing
`polynucleotides in a sample, using a FRET (fluorescence resonance energy
`transfer)-based light-harvesting multichromophore system. Ex. 1001,
`Abstract. The system is made up of at least two components: “(a) a cationic
`multichromophore, and (b) a ‘sensor polynucleotide’ (Oligo-C*) comprising
`an anionic polynucleotide conjugated to a signaling chromophore.” Id. at
`4:14–17. The ’799 patent states that “the optical amplification provided by a
`water soluble multichromophore[,] such as a conjugated polymer[,] can be
`used to detect polynucleotide hybridization to a sensor polynucleotide.” Id.
`at 4:18–21. According to the ’799 patent, the system is “useful for any assay
`in which a sample can be interrogated regarding a target polynucleotide.
`Typical assays involve determining the presence of a target polynucleotide
`in the sample or its relative amount.” Id. at 4:37–39.
`The ’799 patent states that light-harvesting multichromophore systems
`are “efficient light absorbers by virtue of the multiple chromophores they
`comprise,” and can “efficiently transfer energy to nearby luminescent
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`species,” called “signaling chromophores.” Id. at 10:54–56, 11:1–3. The
`’799 patent states that “[t]he multichromophores used in the present
`invention are polycationic and can interact with a sensor polynucleotide
`electrostatically.” Id. at 11:41–43.
`In a preferred embodiment, the multichromophore is a conjugated
`polymer. Id. at 11:55–56. Conjugated polymers are “characterized by a
`delocalized electronic structure and can be used as highly responsive optical
`reporters for chemical and biological targets.” Id. at 11:20–22. The ’799
`patent states that “the backbone” of the conjugated polymer “contains a large
`number of conjugated segments in close proximity,” and thus, is efficient for
`FRET. Id. at 11:24–28.
`The sensor polynucleotide is an anionic polynucleotide
`complementary to the target polynucleotide to be assayed. Id. at 12:47–49.
`The ’799 patent states that it may be conjugated to a signaling chromophore
`using any chemical method known in the art. Id. at 12:52–54. Signaling
`chromophores “include any substance which can absorb energy from a
`polycationic multichromophore in an appropriate solution and emit light,”
`such as fluorophores. Id. at 12:59–62.
`The ’799 patent states that “[a]ny instrument that provides a
`wavelength that can excite the polycationic multichromophore and is shorter
`than the emission wavelength(s) to be detected can be used for excitation.”
`Id. at 16:24–27. Similarly, the light emitted from the signaling chromophore
`“can be detected through any suitable device or technique.” Id. at 16:34–36.
`The ’799 patent states that “many suitable approaches are known in the art”
`for detecting the emitted light.” Id. at 16:36–37.
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`C. Challenged Claims
`Petitioner challenges claims 1, 3, 4, 6, and 7 of the ’799 patent.
`Pet. 13. Claim 1 is the only independent claim, and provides:
`1. A method comprising:
`(a) contacting a sample with a light harvesting multichromophore
`system, the system comprising:
`i) a signaling chromophore; and
`ii) a water-soluble conjugated polymer comprising a
`delocalized electronic structure, wherein the polymer can
`transfer energy from its excited state to the signaling
`chromophore to provide a greater than 4 fold increase in
`fluorescence emission from the signaling chromophore than
`can be achieved by direct excitation of the signaling
`chromophore in the absence of the polymer;
`(b) applying a light source to the sample; and
`(b) detecting whether light is emitted from the signaling chromophore.
`Ex. 1001, 21:50–65.
`D. Asserted Ground of Unpatentability
`Petitioner challenges the patentability of claims 1, 3, 4, 6, and 7 of the
`’799 patent on the following ground:
`Reference
`Claims
`Basis
`1, 3, 4, 6, and 7
`35 U.S.C. § 102(b) Bazan1
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`Pet. 13–14. Petitioner also relies on the Declaration of Kirk S. Schanze,
`Ph.D. (Ex. 1002). Id. at 3. Patent Owner disputes that Petitioner’s asserted
`ground presents a proper unpatentability challenge for an inter partes
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`
`1 Guillermo C. Bazan et al., U.S. Patent Application Publication No.
`US 2004/0142344 A1 (July 22, 2004) (“Bazan,” Ex. 1026).
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`review, and further disputes that Petitioner’s asserted ground renders the
`challenged claims unpatentable. See generally Prelim. Resp.
`II. ANALYSIS
`We address below whether the Petition meets the threshold showing
`for institution of an inter partes review under 35 U.S.C. § 314(a). We
`consider the asserted ground of unpatentability in view of the understanding
`of a person of ordinary skill in the art. For the purpose of this decision, we
`find that the prior art itself is sufficient to demonstrate the level of ordinary
`skill in the art at the time of the invention. See Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate
`level of ordinary skill in art). Further, based on the information presented at
`this stage of the proceeding, we consider Petitioner’s declarant, Dr. Schanze,
`qualified to opine from the perspective of an ordinary artisan at the time of
`the invention. See Ex. 1027 (curriculum vitae of Dr. Schanze).
`A. Priority Documents
`The ’799 patent was filed as U.S. Patent Application No. 14/460,245
`(“the Sixth Application”) on August 14, 2014. Ex. 1001, (21), (22); see also
`Ex. 1014. The Sixth Application claimed the benefit of a series of
`continuation applications, the earliest of which includes U.S. Application
`No. 10/648,945, filed on August 26, 2003 (“the First Application”), and
`Provisional Application No. 60/406,266, filed on August 26, 2002 (“the
`Provisional Application”). Ex. 1001, (60).
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`The written description of the Provisional Application differs from
`that of the First Application, compare Ex. 1003, 2–57, with Ex. 1004, 5–492,
`but the First Application “incorporate[s]” the Provisional Application “by
`reference in its entirety,” Ex. 1004, 5. All applications from the First
`Application through the Sixth Application share an identical written
`description. Compare Ex. 1004, 5–49, with Ex. 1014, 10–38.
`Petitioner provides a schematic representation of the series of
`applications leading to the ’799 patent, and to which the ’799 patent claims
`priority. Pet. 4. We note that the schematic provides an incorrect filing date
`year for the Sixth Application, but we otherwise find the schematic useful
`for understanding the ’799 patent’s priority chain and reproduce it below.
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`2 For consistency with the parties, we use the page numbering added
`to Exhibit 1004.
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`A schematic representation by Petitioner of the series of
`applications leading to the ’799 patent. See Pet. 4.3
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`3 The Sixth Application was filed on August 14, 2014, rather than in
`2016, as indicated in the schematic.
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`Concurrently with the filing of the Sixth Application, Patent Owner
`filed a preliminary amendment cancelling all previous claims and adding
`new claims directed to methods for using the disclosed light-harvesting
`multichromophore system. Ex. 1014, 3–4.
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b)
`(2016) 4; Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Under that standard, we presume that a claim term carries its
`“ordinary and customary meaning,” which “is the meaning that the term
`would have to a person of ordinary skill in the art in question” at the time of
`the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007); see also Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir.
`2016) (“Under a broadest reasonable interpretation, words of the claim must
`
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`4 The claim construction standard to be employed in an inter partes
`review recently changed. See Changes to the Claim Construction Standard
`for Interpreting Claims in Trial Proceedings Before the Patent Trial and
`Appeal Board, 83 FED. REG. 51340 (Oct. 11, 2018). Petitioner states that it
`adopts certain constructions made by the district court in concurrent
`litigation “in line with the proposed modification to the rules . . . requiring
`that the Board apply a Phillips-type claim construction analysis in post-grant
`proceedings.” Pet. 14. But, based on the filing date of the Petition in this
`proceeding, the applicable claim construction standard remains the “broadest
`reasonable construction,” as set forth in 37 C.F.R. § 42.100(b) (2016). See
`83 FED. REG. at 51340 (stating that the new rule applies to all post-grant
`proceedings filed on or after November 13, 2018).
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`be given their plain meaning, unless such meaning is inconsistent with the
`specification and prosecution history.”). Any special definition for a claim
`term must be set forth in the specification with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`Petitioner proposes constructions of certain claim terms. Pet. 14–15.
`Patent Owner argues that most of those constructions are unnecessary,
`because Petitioner “never indicates how they relate to the ground asserted in
`the Petition.” Prelim. Resp. 4–5. To determine whether to institute an inter
`partes review, we need not explicitly interpret every claim term for which
`Petitioner proposes a construction. See 35 U.S.C. § 314(a); Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
`those terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”). We find that, to resolve whether
`Petitioner has demonstrated a reasonable likelihood of prevailing, we need
`only address the parties’ respective constructions of “greater than 4 fold
`increase in fluorescence emission” and “in the absence of the polymer.”
`i. “greater than 4 fold increase in fluorescence emission”
`Petitioner contends that “greater than 4 fold” is an open-ended range
`that “has a lower limit but no upper limit.” Pet. 18 (quoting In re Fisher,
`427 F.2d 833, 839 (CCPA 1970)). Thus, Petitioner contends that “greater
`than 4 fold increase in fluorescence emission” should be construed as having
`“an increase in fluorescence emission that is at least 4 fold and includes at
`least 10-fold and 100-fold increases, for example.” Id. at 20.
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`In support of its definition, Petitioner relies on the Markman Order
`issued in the district court litigation. Id. at 18 (citing Ex. 1044). In that
`Order, the district court stated that “[t]he claim language places no upper
`limit on the increase in fluorescence emission,” and “[t]he claim language
`merely requires that the increase be at least greater than 4 fold.” Ex. 1044,
`17. Petitioner also relies on statements made by the parties’ respective
`experts. Pet. 18 (citing Ex. 1002; Ex. 10455). Specifically, Petitioner states:
`Both Dr. Schanze and Dr. Swager (Patent Owner’s expert) agree
`that the phrase ‘greater than 4 fold’ has no upper limit. Both
`experts testified that a POSA would have understood the ’799
`patent claims to be broad, and cover, for example, at least 10-
`fold and 100-fold increases in fluorescence emission.
`Id. (citing Ex. 1002 ¶ 89; Ex. 1045, 161:25–162:17).
`Patent Owner disputes Petitioner’s characterization of the Markman
`Order, stating that “the district court denied [Petitioner’s] request to include
`‘no upper limit’ in the claim construction.” Prelim. Resp. 5 (citing Ex. 1044,
`19 n.7). Petitioner states that the district court’s construction was “an
`increase of fluorescence emission from the signaling chromophore of more
`than 4 fold,” and argues that no construction of the phrase is necessary. Id.
`at 6.
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`Claim 1 provides a method for detecting light emitted from a
`signaling chromophore by contacting a sample with a light-harvesting
`multichromophore system that comprises a signaling chromophore and a
`water-soluble conjugated polymer. Ex. 1001, 21:50–65. Claim 1 describes
`
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`5 Ex. 1045 is the deposition transcript of Timothy Manning Swager,
`Ph.D., taken in the district court litigation.
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`the water-soluble conjugated polymer in terms of its structure (i.e., “a
`delocalized electronic structure”) and its function (i.e., it “can transfer
`energy from its excited state to the signaling chromophore to provide a
`greater than 4 fold increase in fluorescence emission”). Id. at 21:55–62.
`Thus, by its plain terms, the claimed water-soluble conjugated polymer can
`transfer energy from its excited state to the signaling chromophore to
`provide a greater than 4 fold increase in fluorescence emission. See, e.g.,
`Veritas Techs. LLC v. Veeam Software Corp., 835 F.3d 1406, 1411 (Fed.
`Cir. 2016) (claim construction begins with the plain language of the claims).
`The written description of the ’799 patent does not define “greater
`than 4 fold” but provides, e.g., an example of a water-soluble conjugated
`polymer that increases the fluorescence emission of a signaling chromophore
`by “~4 fold.” Ex. 1001, 18:15–18. The ’799 patent also explains that the
`signaling chromophore reached a point of “acceptor saturation,” the point at
`which “not all photons harnessed by polymer 1 (the donor) can be
`transferred to the Oligo-C* (the acceptor).” Id. at 18:9–12. At acceptor
`saturation, the ’799 patent explains, photoluminescence of the signaling
`chromophore no longer increased. Id. at 18:12–15. Thus, the ’799 patent,
`while placing no express numerical upper limit on the increase in
`fluorescence emission, teaches that a signaling chromophore inherently
`possesses an upper limit on fluorescence emission, based on that signaling
`chromophore’s acceptor saturation point. Id.6
`
`
`6 For example, the Provisional Application reports a “more than 25
`times greater” fluorescence emission at the signaling chromophore’s
`saturation point. Ex. 1003, 27:17–20.
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`Turning to the extrinsic evidence, Dr. Schanze testifies that “claim [1]
`does not recite an upper limit,” and thus, an ordinarily skilled artisan would
`interpret the term “greater than 4 fold” as “encompass[ing] 10-, 50-, even
`100-fold increases in fluorescence emission.” Ex. 1002 ¶ 89. We are not
`persuaded that Dr. Schanze’s testimony supports Petitioner’s construction,
`however, because Dr. Schanze does not explain why the ordinarily skilled
`artisan would understand “greater than 4 fold” to necessarily encompass
`numbers of 50, 100, and up to infinity, especially given that the ’799 patent
`teaches some inherent limit on fluorescence emission based on the signaling
`chromophore’s acceptor saturation point. Ex. 1001, 18:12–15. Instead,
`Dr. Schanze appears to rely merely on the “plain words of the claim,”
`without reference to, or consideration of, acceptor saturation in a FRET-
`based light-harvesting system. See Ex. 1002 ¶¶ 89-96; see also 37 C.F.R.
`§ 42.65(a) (“Expert testimony that does not disclose the underlying facts or
`data on which the opinion is based is entitled to little or no weight.”).
`We also find no support for Petitioner’s construction in Dr. Swager’s
`deposition testimony from the district court litigation. See Pet. 18 (citing
`Ex. 1045, 161:25–162:17). The question presented to Dr. Swager at the
`deposition asks for a legal conclusion as to the scope of a claim, rather than
`an interpretation of how an ordinarily skilled artisan would understand the
`claim phrase. See Ex. 1045, 161:25–162:17. Because “experts may be
`examined to explain terms of art, and the state of the art, at any given time,
`but they cannot be used to prove the proper or legal construction of any
`instrument of writing,” Dr. Swager’s testimony does not inform our analysis.
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015)
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`(quotation omitted); see also id. (explaining that a district court may rely on
`expert testimony to make “a factual finding that, in general, a certain term of
`art had a particular meaning to a person of ordinary skill in the art at the time
`of the invention,” but that “the district court must then conduct a legal
`analysis: whether a skilled artisan would ascribe that same meaning to that
`term in the context of the specific patent claim under review” (emphasis in
`original)).
`Finally, we reject Petitioner’s apparent contention that case law
`supports a per se rule that any range identifying only a minimum value
`necessarily covers that minimum value to infinity. For example, Petitioner
`cites to MagSil Corp. v. Hitachi Global Storage Technologies, 687 F.3d
`1377, 1383 (Fed. Cir. 2012), for the proposition that “open-ended ranges are
`not limited to what is reported in the literature or what patentees believe to
`be the highest achievable value.” Pet. 19.
`MagSil is distinguishable, however, in that the patentee in that case
`sought a broad construction for the claim phrase “a change in resistance of at
`least 10%” to cover the defendant’s disk drive product. See MagSil, 687
`F.3d at 1381 (“The record shows that MagSil advocated for a broad
`construction of this claim term.”). The district court had construed the
`phrase to cover resistance changes from 10% “up to infinity.” Id. at 1381
`(citation omitted). The Federal Circuit held that this broad construction was
`not enabled under 35 U.S.C. § 112, because—contrary to MagSil’s litigation
`position—the inventors during prosecution understood that a 100% resistive
`change was the highest possible value for resistive change. Id. at 1382. The
`Court also emphasized that values greater than 100% resistive change were
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`not achieved until 12 years after the patent at issue was filed. Id. “In sum,”
`the Court held, “this field of art has advanced vastly after the filing of the
`claimed invention,” and “[t]he specification . . . does not contain sufficient
`disclosure to present even a remote possibility that an ordinarily skilled
`artisan could have achieved the modern dimensions of this art.” Id.
`In this case, however, it is Petitioner that advocates for an unlimited
`claim range to support its lack-of-priority argument. This is in contrast to
`MagSil, where “MagSil’s difficulty in enabling the asserted claims [was] a
`problem of its own making.” Id. at 1384; see also Liebel–Flarsheim Co. v.
`Medrad, Inc., 481 F.3d 1371, 1380 (Fed. Cir. 2007) (“The irony of this
`situation is that Liebel successfully pressed to have its claims include a
`jacketless system, but, having won that battle, it then had to show that such a
`claim was fully enabled, a challenge it could not meet.”). In addition,
`Petitioner does not point us to record evidence suggesting that an ordinarily
`skilled artisan would understand that signaling chromophores could (even in
`theory) achieve an unlimited increase in fluorescence (or even a 100-fold
`increase), especially given that the art teaches signaling chromophores reach
`acceptor saturation in a FRET-based light-harvesting system. Ex. 1001,
`18:12–15.
`For these reasons, we give the phrase “greater than 4 fold increase in
`fluorescence emission” its plain and ordinary meaning, which is consistent
`with the written description of the ’799 patent, and with the district court’s
`construction: “an increase of fluorescence emission from the signaling
`chromophore of more than 4 fold.” Ex. 1044, 19.
`ii. “in the absence of the polymer”
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`Petitioner contends that “in the absence of the polymer” “means that
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`the polymer is not physically present when measuring direct emission of the
`signaling chromophore.” Pet. 17. Petitioner contends that this construction
`is supported by the plain meaning of the words in the claims, as well as a
`dictionary definition of “absence” as: “failure to be present – opposed to
`presence.” Id.at 16–17 (citing Ex. 1044, 18). Petitioner also contends that
`the specification “gives no particular meaning to the term” that would
`indicate to the ordinarily skilled artisan that the “phrase should be
`interpreted in a way different from its plain and ordinary meaning.” Id. at 17
`(citing Ex. 1002 ¶ 86–88).
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`Patent Owner contends that Petitioner’s construction is inconsistent
`with the construction Petitioner proposed in the district court litigation.
`Prelim. Resp. 6–7. Specifically, Patent Owner contends that Petitioner
`proposed “without polymer present” in district court, but now “deceptively
`departs” from that construction to “requir[e] an affirmative method step of
`measuring direct emission of the signaling chromophore without the
`polymer physically present.” Id. (citing Pet. 16; Ex. 1044, 19).
`Claim 1 recites that the claimed water-soluble conjugated polymer can
`transfer energy from its excited state to the signaling chromophore “to
`provide a greater than 4 fold increase in fluorescence emission from the
`signaling chromophore than can be achieved by direct excitation of the
`signaling chromophore in the absence of the polymer.” Ex. 1001, 21:55–62.
`The written description of the ’799 patent refers to “in the absence of the
`polymer” twice: (1) in Example 3, which provides that “[i]ntegrated
`fluorescence emission at this ratio was ~4 fold greater than that of the
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`directly excited (480 nm) probe in the absence of polymer 1,” id. at 18:15–
`18; and (2) in Example 5, which provides that “[d]irect excitation of the
`signaling Oligo-C* (480 nm), in the absence of polymer, only provided an
`approximate 4 fold sensitization of the intercalated EB,” id. at 19:1–4.
`Although not addressed by either party, we turn to the prosecution
`history. WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1323
`(Fed. Cir. 2018) (“A patent’s specification, together with its prosecution
`history, constitutes intrinsic evidence to which the Board gives priority when
`it construes claims.”). We observe that the phrase “of the signaling
`chromophore in the absence of the polymer” was added to the claims during
`prosecution to overcome the examiner’s rejection for indefiniteness under 35
`U.S.C. § 112. Ex. 1014, 113. Specifically, the Examiner rejected the
`pending claims “because it is unclear what the phrase ‘direct excitation’
`means. It is unclear what is directly excited and how.” Id. In response,
`applicants amended the claims to include the phrase “of the signaling
`chromophore in the absence of the polymer” following “direct excitation.”
`Id. at 123. Thereafter, the Examiner allowed the application. Id. at 140–
`144. Based on applicants’ amendment and the Examiner’s allowance, it
`appears to us that the claim phrase distinguishes “direct excitation” of the
`signaling chromophore from “indirect” excitation of the signaling
`chromophore by FRET from the conjugated polymer.
`For these reasons, we interpret the phrase “in the absence of the
`polymer” broadly, to encompass not only the district court’s construction of
`“without polymer present,” Ex. 1044, 19, but also to encompass the lack of
`energy transfer (via FRET) from the conjugated polymer to the signaling
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`chromophore. No further interpretation is necessary. Vivid Techs., 200 F.3d
`at 803.
`
`C. Priority
`The parties dispute whether claims 1, 3, 4, 6, and 7 of the ’799 patent
`are entitled to a priority date before September 12, 2007, the filing date of
`the Second Application. Pet. 21; Prelim. Resp. 9. Briefly, Petitioner asserts
`that the claims lack written description support in either the Provisional
`Application (filed August 26, 2002) or the First Application (filed August
`26, 2003). Pet. 23–25. Petitioner asserts that, because “the challenged
`claims are not entitled to their earlier-filed priority applications, the first
`published application in the family,” i.e., Bazan (published July 22, 2004),
`“is prior art to, and anticipates, the challenged claims.” Id. at 2.7 Patent
`Owner asserts that the challenged claims “are fully supported by the First
`Application and are thus entitled to a priority date of at least August 26,
`2003.” Prelim. Resp. 9–10 (footnote omitted). Patent Owner asserts that,
`because “the Petition’s sole ground relies on this priority claim attack, the
`Petition fails to present a ground in which Petitioner would prevail in
`demonstrating unpatentability.” Id. at 10.
`i. Written Description
`To be entitled to the filing date of an earlier application, the earlier
`application must disclose the claimed invention “in the manner provided by
`
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`7 Because Bazan published between the filing of the First Application
`and the Second Application, we, like the parties, confine our analysis to
`whether the disclosures of the Provisional Application and the First
`Application support the challenged claims. See Pet. 24 n.3; Prelim. Resp. 10
`n.1.
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`§ 112(a) (other than the requirement to disclose the best mode).” 35 U.S.C.
`§§ 119(e), 120. Section 112(a) requires that the specification contain a
`written description of the claimed invention. 35 U.S.C. § 112(a). “[T]he
`hallmark of written description is disclosure.” Ariad Pharm., Inc. v. Eli Lilly
`& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written
`description requirement is met when the specification “conveys to those
`skilled in the art that the inventor had possession of” and “actually invented”
`the claimed subject matter. Id. The purpose of the written description
`requirement is to ensure that a patent’s claims “do[] not overreach the scope
`of the inventor’s contribution to the field of art as described in the patent
`specification.” Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir.
`2000).
`“To obtain the benefit of the filing date of a parent application, the
`claims of the later-filed application must be supported by the written
`description in the parent ‘in sufficient detail that one skilled in the art can
`clearly conclude that the inventor invented the claimed invention as of the
`filing date sought.’” Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333,
`1335 (Fed. Cir. 2010) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d
`1565, 1572 (Fed. Cir. 1997)). Without written description support, claims
`containing new matter are unpatentable under § 112(a). Ariad, 598 F.3d at
`1348. This required compliance with § 112(a) ensures that the applicant
`fully possessed the entire scope of the claim as of the original filing date.
`TurboCare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co.,
`264 F.3d 1111, 1118 (Fed. Cir. 2001).
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`The test for adequate 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.
`“The level of detail required to satisfy the written description requirement”
`necessarily “varies depending on the nature and scope of the claims and on
`the complexity and predictability of the relevant technology.” Id. But a
`“mere wish or plan” for obtaining the claimed subject matter also 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).
`ii. Permissibility of Petitioner’s Priority Challenge
`Before turning to the merits of Petitioner’s priority challenge, we
`address Patent Owner’s argument that the Board should deny institution
`because the Petition is “entirely premised on a thinly-veiled attack on the
`written description support for the claims.” Prelim. Resp. 1, 55–58. Patent
`Owner argues that, in an inter partes review, a claim may be challenged
`“only on a ground that could be raised under section 102 or 103.” Id. at 55
`(quoting 35 U.S.C. § 311(b)). But here, Patent Owner argues, Petitioner’s
`priority challenge “is indistinguishable from an argument that the claims of
`the ’799 patent lack written description in the patent’s own specification,”
`and thus, represents “an impermissible basis for inter partes review.” Id.8
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`8 Patent Owner points out that Petitioner’s prior-art challenge relies on
`the publication of the First Application (which shares an identical written
`description with ’799 patent) as p