`Tel: 571-272-7822
`
`
`
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`
`
`Paper 29
`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
`Granting Petitioner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`
`
`PGR2018-00092
`Patent 9,820,999 B2
`
`
`INTRODUCTION
`I.
`Petitioner timely filed a Request for Rehearing (Paper 26, “Req.
`Reh’g.”) requesting rehearing of our Final Written Decision (Paper 25,
`“Dec.”). For the reasons set forth below, we grant Petitioner’s request for
`rehearing. We also vacate our original Final Written Decision (Paper 25)
`and will issue a revised, corrected Final Written Decision.
`
`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
`In its Petition, Petitioner asserted the following three obviousness
`grounds of unpatentability against the ’999 patent: (i) obviousness of claims
`1–4, 9–20, and 22–29 over the combination of Varenna 2012, Varenna 2016,
`and/or Manara, optionally combined with Bruehl and one or more of Gatti,
`La Montagna, and/or Muratore (“Ground 5”); (ii) obviousness of claims 5–8
`and 21 over the combination of Varenna 2012, Varenna 2016 and/or Manara
`in combination with Manicourt (“Ground 6”); and (iii) obviousness of claim
`30 over the combination of Varenna 2012, Varenna 2016, and/or Manara in
`combination with Schwarzer, and optionally in further combination with
`Bruehl and Gatti, La Montagna, and/or Muratore (“Ground 7”). Pet. 62–79.
`
`2
`
`
`
`PGR2018-00092
`Patent 9,820,999 B2
`
`
`The Final Written Decision determined that each of Petitioner’s
`obviousness grounds depended on the contention that Varenna 2016 and
`Manara constitute prior art, and that “Petitioner fail[ed] to show sufficiently
`that those references are prior art against the ’999 patent claims.” Dec. 29.
`In view of that determination, the Final Written Decision determined also
`that Petitioner failed to show that it is more likely than not that any
`challenged claim is unpatentable based on the obviousness grounds stated in
`the Petition. Id. at (citing Pet. 62–79).
`Petitioner asserts that we erred with regard to Grounds 5–7 because
`Petitioner’s obviousness grounds do not depend solely on Varenna 2016 and
`Manara, but additionally relied on Varenna 2012 as an alternative primary
`reference and that we failed to consider properly Grounds 5–7 in that regard.
`Req. Reh’g. 2–7. Petitioner is correct.
`In view of the above, we conclude that Petitioner has established that
`the Final Written Decision misapprehended or overlooked the reliance of
`Varenna 2012 in Grounds 5–7. Accordingly, we grant the request for
`rehearing. We also vacate the Final Written Decision (Paper 25). A revised
`and corrected Final Written Decision will be issued.
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that the request for rehearing is granted. The Final
`Written Decision (Paper 25) is vacated and a revised and corrected Final
`Written Decision properly will be issued.
`
`
`3
`
`
`
`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
`
`
`4
`
`
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