`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`Paper No. 13
`Entered: June 2, 2020
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`PHARMACOSMOS A/S,
`Petitioner,
`
`v.
`
`AMERICAN REGENT, INC.,
`Patent Owner.
`
`PGR2020-00009
`Patent 10,478,450 B2
`
`
`Before ERICA A. FRANKLIN, JON B. TORNQUIST, and
`JAMIE T. WISZ, Administrative Patent Judges.
`
`WISZ, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`Supplemental Briefing on 35 U.S.C. § 325(d)
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`PGR2020-00009
`Patent 10,478,450 B2
`
`
`INTRODUCTION
`I.
`Petitioner, Pharmacosmos A/S (“Petitioner”), filed a Petition on
`January 6, 2020, challenging claims of U.S. Patent No. 10,478,450 B2 (“the
`’450 patent”). Paper 1. American Regent, Inc. (“Patent Owner”), filed a
`Preliminary Response on May 18, 2020. Paper 12. In its Preliminary
`Response, Patent Owner argues that the Board should apply its discretion
`under 35 U.S.C. § 325(d) to deny institution of the requested proceeding
`because “Petitioner presents the same or substantially the same arguments
`previously presented during prosecution and related post-grant proceedings.”
`Id. at 68–70 (arguing that “the Petition is premised on (1) claim construction
`arguments regarding the term ‘iron polyisomaltose’ that the examiner and
`the Board have repeatedly rejected, and (2) § 112 arguments that the
`examiner squarely addressed during prosecution.”).
`In view of Advanced Bionics, LLC v. Med-El Elektromedizinische
`Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020)
`(precedential), we determine that it would be helpful for the parties to
`provide additional briefing on the applicability of § 325(d) to this case. In
`particular, the parties should address the framework for analyzing such
`applicability of § 325(d) set forth in that decision. As explained in the
`decision, the framework involves considering,
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and
`(2) if either condition of the first part of the framework is
`satisfied, whether the petitioner has demonstrated that the Office
`erred in a manner material to the patentability of challenged
`claims.
`
`2
`
`
`
`PGR2020-00009
`Patent 10,478,450 B2
`
`Advanced Bionics, Paper 6 at 8. Under the first part of the framework, the
`same art or arguments “must have been previously presented to the Office
`during proceedings pertaining to the challenged patent.” Id. at 7. Under the
`second part of the framework, it must be demonstrated that the Office erred
`in a material manner, which “may include an error of law, such as
`misconstruing a claim term, where the construction impacts patentability of
`the challenged claims.” Id. at 8–9 n.9. And “[i]f reasonable minds can
`disagree regarding the purported treatment of the art or arguments, it cannot
`be said that the Office erred in a manner material to patentability.” Id. at 9.
`
`Advanced Bionics also acknowledges that the Becton, Dickinson
`factors “provide useful insight into how to apply the framework under . . .
`§ 325(d).” Id. at 9 & n.10 (detailing the Becton, Dickinson factors). So we
`also encourage the parties to discuss any Becton, Dickinson factors relevant
`to the facts of this case. The parties may submit additional evidence from
`the prosecution history of the challenged patent to support any facts asserted
`in the supplemental briefing regarding the applicability of § 325(d).
`
`
`
`
`
`
`
`
`3
`
`
`
`PGR2020-00009
`Patent 10,478,450 B2
`
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner is authorized to file a reply to the
`Preliminary Response, of no more than seven (7) pages and limited to
`addressing the issue of discretionary denial under 35 U.S.C. § 325(d), by
`June 9, 2020; and it is
`FURTHER ORDERED that Patent Owner is authorized to file a
`sur-reply to Petitioner’s reply, of no more than seven (7) pages and limited
`to the issue of discretionary denial under 35 U.S.C. § 325(d), by June 16,
`2020.
`
`
`
`
`
`4
`
`
`
`PGR2020-00009
`Patent 10,478,450 B2
`
`For PETITIONER:
`
`Jeffrey Oelke
`Ryan P. Johnson
`Vanessa Park-Thompson
`So Yeon Choe
`FENWICK & WEST LLP
`joelke@fenwick.com
`ryan.johnson@fenwick.com
`vpark-thompson@fenwick.com
`schoe@fenwick.com
`
`
`For PATENT OWNER:
`
`Barbara Rudolph
`Trenton Ward
`Cora Holt
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`Barbara.rudolph@finnegan.com
`Trenton.ward@finnegan.com
`Cora.holt@finnegan.com
`
`5
`
`
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