Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 25
`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.
`____________
`
`PGR2019-00003
`Patent 9,867,839 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 25
`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.
`____________
`
`PGR2019-00003
`Patent 9,867,839 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)
`
`
`
`
`
`
`
`
`
`PGR2019-00003
`Patent 9,867,839 B2
`
`
`I. INTRODUCTION
`Patent Owner filed a Request for Rehearing (Paper 23, “Req. Reh’g”)
`seeking review of the Board’s Final Written Decision (Paper 22, “Dec.”), in
`which we held unpatentable claims 1–14 of U.S. Patent No. 9,867,839 B2
`(Ex. 1001, “the ’839 patent”). We also refer to the Petition (Paper 2, “Pet.”),
`Patent Owner’s Response (Paper 9, “PO Resp.”), Petitioner’s Reply (Paper
`14, “Reply”), and Patent Owner’s Sur-Reply (Paper 16, “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
`In our Final Written Decision, we determined that the information
`pertaining to the publication on the face of each of Verrena 2012 (Ex. 1005),
`Muratore (Ex. 1006), Gatti 2009 (Ex. 1007), Dowd (Ex. 1009), Rossini (Ex.
`1013), Varenna Protocol (Ex. 1014), deCastro (Ex. 1015), and Zaspel (Ex.
`1016) (collectively, “Petitioner’s References”) was sufficient to establish
`that each document qualifies as a printed publication. Dec. 12–18. In doing
`
`
`
`2
`
`
`
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`PGR2019-00003
`Patent 9,867,839 B2
`
`so, we considered the testimony of Dr. Poree and, additionally, the
`information provided by Patent Owner. 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 two grounds. Req. Reh’g 1–
`2. First, Patent Owner contends that our determination that each of
`Petitioner’s References qualifies as a prior art printed publication is based on
`a misapprehension of the law. Id. at 1. Second, Patent Owner contends that
`we overlooked Patent Owner’s arguments set forth in the briefing. Id. at 1–2
`(citing PO Resp., 3–9 and Sur-Reply, 4–9). We address in turn each of those
`asserted grounds for modification.
`
`i. Whether we misapprehended or overlooked evidence of public
`accessibility
`Patent Owner contends that the panel “did not look for evidence of
`
`public accessibility, . . . . which involves examining the evidence for proof
`that each non-patent reference 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 3 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908
`F.3d 765, 773 (Fed. Cir. 2018)). We do not agree. On the contrary, we
`addressed with particularity the substantial evidence 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. 12.
`
`
`
`3
`
`
`
`
`PGR2019-00003
`Patent 9,867,839 B2
`
`
`Specifically, in our Decision, we properly credited indicia on the face
`of Petitioner’s References, 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). Using Varenna
`2012 as an example, 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. 15–16 (quoting Ex. 1005). In the same manner, the
`totality of evidence supports our finding that each of Petitioner’s References
`was publicly available prior to the critical date of the invention. Id. at 15–
`18.
`
`Patent Owner advanced no evidence tending to cast doubt on that
`publication date. PO Resp., 3–9 and Sur-Reply, 4–9. 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 Petitioner’s
`References, as part of the totality of evidence bearing on the issue.
`Furthermore, we did not err in finding Patent Owner’s arguments,
`unsupported by evidence, unpersuasive in view of the facts and
`circumstances supporting Petitioner’s position. 1
`
`
`1 As noted in the Final Written Decision, Patent Owner did not challenge the
`admissibility of any evidence or otherwise identify any reason to exclude
`
`
`
`4
`
`
`
`
`PGR2019-00003
`Patent 9,867,839 B2
`
`
`We have considered Patent Owner’s remaining positions set forth in
`the Request and are not persuaded to change the conclusions set forth in the
`Final Written Decision. Patent Owner does not direct us to any evidence
`that we may have misapprehended or overlooked when reaching our
`conclusions. Rather, Patent Owner continues to advocate its position and
`expresses disagreement with the conclusions made in the Final Written
`Decision, but does not persuade us that we misapprehended or overlooked
`any matter.
`
`ii. Whether we failed to properly consider Patent Owner’s arguments
`and authority
`Patent Owner alleges that the Board erred by failing to “substantively
`address” Patent Owner’s arguments set forth in the Patent Owner Response
`and Sur-Reply. Req. Reh’g. 9–11 (citing PO Resp., 3–9 and Sur-Reply, 4–
`9). Specifically, Patent Owner contends that
`
`[T]he Board did not critically analyze the indicia to explain how
`they prove public accessibility under the law. Taking Varenna
`2012 as an example, the Board listed several items of indicia, but
`did explain how they combine to show a person of ordinary skill
`in the art could have located Varenna 2012, or that it was actually
`disseminated, i.e., that it was publicized or placed in front of the
`interested public without restriction on redistribution or
`expectation of confidentiality. SRI Int’l, Inc. v. Internet Sec. Sys.,
`Inc., 511 F.3d 1186, 1197 (Fed. Cir. 2008), GoPro, Inc. v.
`Contour IP Holding LLC, 908 F.3d 690, 694 (Fed. Cir. 2018).
`Id. at 10–11.
`
`
`any of Petitioner’s References. Dec. 15.
`
`
`
`5
`
`
`
`
`PGR2019-00003
`Patent 9,867,839 B2
`
`
`We are not persuaded by Patent Owner’s contentions that we
`overlooked or failed to address any of Patent Owner’s arguments. We
`understand Patent Owner’s position to be that indicia of publication on the
`face of Petitioner’s References are insufficient to establish that any of
`Petitioner’s References are prior art printed publications. Req. Reh’g. 9–11;
`PO Resp., 3–9; Sur-Reply, 4–9. However, we considered that position and
`did not agree under the circumstances presented before in this case. Dec.
`12–18.
`In our Decision, we resolved a factual dispute between the parties
`regarding whether any of Petitioner’s References were publicly available.
`Id. 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 Petitioner’s References 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
`Patent Owner’s position that Petitioner’s References are not printed
`publications. 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., 3–9; Sur-Reply, 4–9. Under those circumstances, we
`determined that the facts and circumstances favor a determination that the
`indicia of publication on Petitioner’s References are sufficient to establish
`that Petitioner’s References qualify as printed publications for the reasons
`set forth in our Final Written Decision. Id. at 16.
`Furthermore, our findings regarding Petitioner’s References align with
`the guidance provided in Hulu, which sets forth a case-by-case approach in
`
`
`
`6
`
`
`
`
`PGR2019-00003
`Patent 9,867,839 B2
`
`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, for the reasons discussed above, we conclude that we
`did not overlook or misapprehend 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.
`
`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.
`
`
`
`
`7
`
`
`
`
`PGR2019-00003
`Patent 9,867,839 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
`
`
`
`
`
`
`
`
`
`
`
`
`lb
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`8
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