Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 30
`Date: November 10, 2020
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`GRÜNENTHAL GMBH,
`Petitioner,
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`Patent Owner.
`____________
`
`PGR2018-00092
`Patent 9,820,999 B2
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, SHERIDAN K. SNEDDEN,
`and CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 30
`Date: November 10, 2020
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`GRÜNENTHAL GMBH,
`Petitioner,
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`Patent Owner.
`____________
`
`PGR2018-00092
`Patent 9,820,999 B2
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, SHERIDAN K. SNEDDEN,
`and CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`PGR2018-00092
`Patent 9,820,999 B2
`
`
`I. INTRODUCTION
`Patent Owner filed a Request for Rehearing (Paper 27, “Req. Reh’g”)
`seeking review of the Board’s Final Written Decision (Paper 25, “Dec.”), in
`which we held unpatentable claims 1-4, 9, 10, 12, 14, 16-18, 23-25 and 27-
`29of U.S. Patent No. 9,820,999 B2 (Ex. 1001, “the ’999 patent”). We also
`refer to the Petition (Paper 2, “Pet.”), Patent Owner’s Response (Paper 10,
`“PO Resp.”), Petitioner’s Reply (Paper 11, “Reply”), and Patent Owner’s
`Sur-Reply (Paper 18, “Sur-Reply”).
`For the reasons set forth below, Patent Owner’s request for rehearing
`is denied.
`
`II. STANDARD OF REVIEW
` “The burden of showing that a decision should be modified lies with
`the party challenging the decision.” Office Patent Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the
`dissatisfied party must (1) “specifically identify all matters the party believes
`the Board misapprehended or overlooked” and (2) identify the place “where
`each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent
`Trial Practice Guide, 77 Fed. Reg. at 48,768.
`
`III. DISCUSSION
`A. Background of the Dispute
`The claimed invention relates to methods of treating chronic regional
`pain syndrome (“CRPS”) by administration of neridronic acid. Ex. 1001,
`code (54). Claim 1 is the sole independent claim and requires administration
`of neridronic acid in salt or acid form to a human being having CRPS
`triggered by bone fracture. Id. at 106:25–30 (claim 1). In our Final Written
`
`
`
`2
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`PGR2018-00092
`Patent 9,820,999 B2
`
`Decision, we determined Varenna 20121 anticipates the subject matter of
`claim 1 and dependent claims 2–4, 9, 10, 12, 14, 16–18, 23–25, and 27–29
`thereto. Dec. 20–28. In reaching that determination, we further determined
`that the information pertaining to the publication on the face of
`Verrena 2012 was sufficient to establish that the document qualifies as a
`printed publication. Dec. 14–19. In doing so, we considered the testimony
`of Dr. Robinson (Ex. 1044) and, additionally, the information provided by
`Patent Owner (PO Resp. 4–13; Sur-Reply 5–13). Id.
`Patent Owner requests modification of our determination regarding
`the publication status of Petitioner’s References and, consequently,
`modification of the Final Written Decision, on three grounds. First, Patent
`Owner contends that our determination that Verrena 2012 qualifies as a prior
`art printed publication is based on a misapprehension of the law. Req.
`Reh’g 2–8. Second, Patent Owner contends we “did not analyze the
`conclusory assertions of the Robinson Declaration.” Id. at 8–11. Third,
`Patent Owner contends that we improperly relied on evidence submitted
`with Petitioner’s Reply, specifically, the Robinson Declaration (Ex. 1044).
`Id. at 12–15.
`We address in turn each of those asserted grounds for modification.
`
`
`1 M. Varenna et al., Treatment of complex regional pain syndrome
`type I with neridronate: a randomized, double-blind, placebo-controlled
`study, RHEUMATOLOGY 52: 534–42 (Nov. 2012) (Ex. 1005, “Varenna”).
`
`
`
`3
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`PGR2018-00092
`Patent 9,820,999 B2
`
`B. Whether we misapprehended or overlooked evidence of public
`accessibility
`Patent Owner submits that the panel “did not look for evidence of
`
`public accessibility, . . . . which involves examining the evidence for proof
`that Varenna 2012 was ‘disseminated or otherwise made available to the
`extent that persons interested and ordinarily skilled in the subject matter or
`art, exercising reasonable diligence, can locate it.’” Req. Reh’g 2 (quoting
`Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773 (Fed.
`Cir. 2018)).
`We do not agree Patent Owner’s position. On the contrary, we
`acknowledged Acceleration Bay and addressed with particularity the
`evidence of record tending to show that each of Petitioner’s References “was
`disseminated or otherwise made available to the extent that persons
`interested and ordinarily skilled in the subject matter or art, exercising
`reasonable diligence, can locate it.” Dec. 15. Specifically, in our Decision,
`we credited indicia on the face of Verrena 2012, such as printed dates and
`citation information, which are “part of the totality of the evidence” bearing
`on the issue of public accessibility. Hulu, LLC v. Sound View Innovations,
`LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019)
`(precedential). Those indicia included details of the copyright notice,
`indicating publication of Varenna 2012 “by Oxford University Press on
`behalf of the British Society for Rheumatology” in “2012;” and also
`additional legends, including “the statement ‘Advance Access publication
`30 November 2012,’” and a conventional edition identifier from the journal
`Rheumatology. Dec. 17 (quoting Ex. 1005). Patent Owner advanced no
`
`
`
`4
`
`
`
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`PGR2018-00092
`Patent 9,820,999 B2
`
`evidence tending to cast doubt on those indicia of publication. PO Resp. 4–
`13; Sur-Reply 5–13.
`Our findings regarding Varenna 2012 align with the guidance
`provided in Hulu, which sets forth a case-by-case approach in which a
`copyright notice may contribute to the totality of evidence weighed that is
`relevant to public availability. See Hulu, Paper 29 at 9–11, 17–19
`(discussing the case-by-case analysis turning on particular circumstances,
`including the nature of the reference (distinguishing a thesis from a journal
`article) and the indicia of public accessibility appearing on the face of the
`reference). Significantly, the facts here include the “conventional markers
`of publication, such as a copyright date, edition identifier, [and] publication
`by a commercial publisher” that the Hulu panel identified as relevant. Id. at
`17; see also Telefonaktiebolaget LM Ericsson v. TCL Corp., 941 F.3d 1341,
`1344 & 1347 (Fed. Cir. 2019) (holding that “the date on the face of the
`journal” was part of the substantial evidence supporting PTAB’s finding that
`a journal article was prior art).
`Accordingly, we do not agree with Patent Owner that we
`misapprehended or overlooked the evidence of public accessibility. Rather,
`in our Decision, we resolved a factual dispute between the parties regarding
`whether any of Petitioner’s References were publicly available. Dec. 14–19.
`In doing so, we considered the totality of evidence related to the parties’
`positions related to that issue. Id. We weighed evidence supporting
`Petitioner’s position that Varenna 2012 would have been publicly
`available—largely, the indicia of publication on the face of each document.
`We also weighed Patent Owner’s arguments and lack of evidence supporting
`
`
`
`5
`
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`
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`PGR2018-00092
`Patent 9,820,999 B2
`
`Patent Owner’s position that Varenna 2012 is not a printed publication. Id.
`In this regard, we note that Patent Owner provided no evidence to counter
`the indicia of publication on the face of Petitioner’s References. PO
`Resp., 4–13; Sur-Reply, 23. Under those circumstances, we determined that
`the facts and circumstances in this case favor a determination that the indicia
`of publication on Varenna 2012 are sufficient to establish that Varenna 2012
`qualifies as printed publications. Dec. 14–19.
`In view of the above, we therefore conclude we did not misapprehend
`or overlook any matter in concluding that the totality of circumstances
`support our finding that Petitioner established by a preponderance of
`evidence that Petitioner’s References were publicly available prior to the
`critical date of the invention. Although the burden of proof never shifted to
`Patent Owner on the issue of public availability, where Patent Owner
`declined to advance counter evidence on point, we did not err by crediting
`the indicia, which appear on the face of Verrena 2012, as part of the totality
`of evidence bearing on the issue.
`C. Whether we improperly considered or weighed Dr. Robinson’s testimony
`Patent Owner contends that
`
`The Board’s decision similarly omits any analysis of the
`assertions made by Robinson. The Robinson Declaration is the
`only evidence purporting
`to show Varenna 2012 was
`disseminated or otherwise made available to the interested
`public, but Petitioner first presented it with the Reply and not
`with the Petition. It should play no role in the printed publication
`analysis.
`
`
`
`6
`
`
`
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`PGR2018-00092
`Patent 9,820,999 B2
`
`Req. Reh’g., 8 (citing Ex. 1044); see also id. at 12–15 (Patent Owner
`contending that it was improper for the Board to consider evidence
`submitted for the first time with the Reply).
`We are not persuaded by Patent Owner’s contentions that we
`improperly considered or weighed the Robinson Declaration. In our Final
`Written Decision, we considered the Declaration of Dr. Philip Robinson,
`who testified that he accessed, reviewed, and posted about Varenna 2012 on
`the social media site Twitter in February 2013, which is before the
`May 14, 2013 priority date of the ’999 patent. Dec. 16 (citing Ex. 1044;
`Reply 11). We weighed Dr. Robinson’s testimony together with the facts
`and circumstances presented before us, including Patent Owner’s arguments
`set forth in its Sur-Reply. Sur-Reply 23. Here, we took account of objective
`supporting evidence on point advanced by Petitioner; including, an exhibit
`Dr. Robinson identified as “‘my tweet,’ which ‘can still be viewed publicly’
`and includes a link that ‘is still active and leads to Varenna.’”2
`Ex. 1044 ¶¶ 5–7, Exhibit A; Dec. 19. Under these circumstances, we did not
`err by finding unpersuasive Patent Owner’s conclusory assertions that
`Dr. Robinson’s sworn testimony “defies belief” and details a feat that would
`require “a photographic and infallible memory.” Sur-Reply 23.
`Patent Owner additionally contends that we misapprehended the law
`by considering Dr. Robinson’s testimony, which was presented for the first
`time with the Reply. Req. Reh’g., 12–15. In particular, Patent Owner
`
`
`2 We further note the uncontested nature of that testimony, given that Patent
`Owner declined the opportunity, provided as of right by our rules, to cross-
`examine Dr. Robinson regarding that testimony. Sur-Reply 23.
`
`
`
`7
`
`
`
`
`PGR2018-00092
`Patent 9,820,999 B2
`
`contends that “Petitioner decided not to offer any evidence or argument
`[with its Petition] to show that Varenna 2012 was disseminated or made
`available before the critical date such that persons interested and ordinarily
`skilled in the subject matter or art, exercising reasonable diligence, could
`have located it,” and that our consideration of Dr. Robinson’s testimony
`submitted with the Reply was improper. Req. Reh’g., 13.
`We are not persuaded by Patent Owner’s contentions and note that we
`addressed these same arguments in our Order denying Patent Owner’s
`motion to strike. Paper 24; see also Paper 13, 1 (Patent Owner contending
`that “Exhibit 1044 and related argument are new evidence and argument
`regarding the alleged accessibility of Varenna 2012 (Ex. 1005) that
`Petitioner could have submitted with the Petition, but chose not to.”). Rather
`than pointing out any matters that the panel misapprehended or overlooked,
`Patent Owner expresses disagreement with that decision, and attempts to
`offer additional reasoning and argument not advanced during trial. Req.
`Reh’g, 12–15. That effort is ineffective to establish reversible error.
`Furthermore, in our Final Written Decision, we noted that
`Even if we set aside Dr. Robinson’s Declaration, . . . we are
`persuaded that the indicia of publication on the face of
`Varenna 2012 are sufficient to establish that Varenna 2012 was
`“sufficiently accessible to the public interested in the art” and
`“disseminated or otherwise made available” to the interested
`public before the critical date, and consequently, a printed
`publication. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331,
`1348 (Fed. Cir. 2016).
`Dec. 19 n.4. For that reason also, Patent Owner shows no reversible error in
`our Final Written Decision holding that Dr. Robinson’s testimony bolsters
`
`
`
`8
`
`
`
`
`PGR2018-00092
`Patent 9,820,999 B2
`
`the substantial evidence of record showing that Varenna 2012 was publicly
`available at the time of the invention.
`
`III. CONCLUSION
`For the above reasons, we deny Patent Owner’s Request for
`Rehearing of the Board’s Final Written Decision in this proceeding.
`
`IV. ORDER
`
`It is
`ORDERED that Patent Owner’s Request for Rehearing of the Final
`Written Decision is denied.
`
`
`
`
`9
`
`
`
`
`PGR2018-00092
`Patent 9,820,999 B2
`
`FOR PETITIONER:
`
`Daniel Minion
`Bruce Haas
`VENABLE LLP
`dminion@venable.com
`bchaas@venable.com
`
`FOR PATENT OWNER:
`
`Brett Johnson
`Parrish Freeman
`MASCHOFF BRENNAN
`bjohnson@mabr.com
`pfreeman@mabr.com
`
`
`
`10
`
`
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