UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`SWEEGEN, INC.
`Petitioner
`
`v.
`
`PURECIRCLE USA INC. AND PURECIRCLE SDN BHD
`Patent Owners
`
`____________
`
`Case: PGR2020-00070
`U.S. Patent No. 10,485,257 B2
`
`PETITIONER’S REPLY
`TO PATENT OWNERS’ PRELIMINARY RESPONSE
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`SWEEGEN, INC.
`Petitioner
`
`v.
`
`PURECIRCLE USA INC. AND PURECIRCLE SDN BHD
`Patent Owners
`
`____________
`
`Case: PGR2020-00070
`U.S. Patent No. 10,485,257 B2
`
`PETITIONER’S REPLY
`TO PATENT OWNERS’ PRELIMINARY RESPONSE
`
`
`
`PureCircle’s arguments suggesting that the Board should exercise its
`
`discretion under 35 U.S.C. § 325(d) to deny instituting this Post Grant Review have
`
`no basis in law or the facts of this case. Not only has PureCircle failed to follow the
`
`correct legal framework clearly set forth in precedent, but it has also made numerous
`
`misstatements of fact in an attempt to bolster its already untenable legal arguments.
`
`The correct legal standard for determining whether the Board should exercise
`
`its discretion under 35 U.S.C. § 325(d) is the following two-part framework set forth
`
`in the precedential decision in Advanced Bionics:1
`
`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.
`
`The six factors set forth in Becton, Dickinson are used to apply this
`
`framework.2 Factors (a), (b), and (d) are analyzed with respect to the first part of the
`
`1 Advanced Bionics, LLC v. Med-el Elektromedizinische Geräte GMBH, IPR 2019-
`
`01469, Paper 6 at 8 (PTAB February 13, 2020) (precedential).
`
`2 Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at
`
`1
`
`
`
`framework, and factors (c), (e), and (f) are considered with respect to the second
`
`part. Here, only factors (c), (d) and (f), which relate to the art or arguments actually
`
`presented to the Office, are relevant. Factors (a), (b), and (e) relate to the similarities
`
`and cumulative nature of asserted prior art and the evaluation of the art during
`
`examination, and this type of argument has not been raised by PureCircle.
`
`As demonstrated below, proper application of the two-part framework set
`
`forth in Advanced Bionics confirms that Section 325(d) does not support a
`
`discretionary denial of institution in this Post Grant Review.
`
`I.
`
`Petitioner’s Arguments Were Not Previously Before the Office
`
`As its main argument, PureCircle wants the Board to find that Petitioner's
`
`arguments (and lack thereof) in its Petition for Inter Partes Review in IPR2019-
`
`01017 (referred to hereinafter as the “‘273 IPR”) show that the same or substantially
`
`the same arguments being made in the present Petition were presented previously to
`
`the Board. However, PureCircle is wrong on the law, and wrong on the facts.
`
`The relevant Becton, Dickinson factor is factor (d): “the extent of overlap
`
`between arguments made during examination and the manner in which Petitioner
`
`relies on the prior art or Patent Owner distinguishes the prior art.” Here, there is
`
`clearly no overlap between arguments made in the ‘273 IPR and the enablement and
`
`17–18 (PTAB Dec. 15, 2017) (precedential).
`
`2
`
`
`
`written description challenges against the ‘257 Patent. In the present Petition, for
`
`example, Petitioner applied the factors set forth in In re Wands, 858 F.2d 731 (Fed.
`
`Cir. 1988), to demonstrate that undue experimentation is required to practice the full
`
`scope of the ‘257 patent’s claims. No such argument was before the Board in the
`
`‘273 IPR. Importantly, PureCircle concedes this fact along with the fact that
`
`Petitioner’s written description arguments set forth in the Petition were also not
`
`made in the ‘273 IPR by stating that “the enablement and written-description
`
`challenges against the ‘257 Patent asserted here differ from the ones asserted against
`
`the ‘273 Patent.” Patent Owners’ Preliminary Response at 61 (emphasis added). This
`
`alone should end the inquiry under Section 325(d).
`
`Apparently knowing the law is not on its side, an undeterred PureCircle has
`
`concocted its own legal standard that deviates significantly from Advanced Bionics
`
`and the plain language of Section 325(d). PureCircle argues that Petitioner already
`
`challenged the present claims under enablement and written description in the ‘273
`
`IPR and that the arguments made in the Petition could have been raised its ‘273 IPR.
`
`There is no basis, and PureCircle provides none, for such a legal standard. Advanced
`
`Bionics clearly states that the same or substantially the same arguments must have
`
`been previously presented to the Office, and without any overlap in arguments, the
`
`Board’s discretion under Section 325(d) does not apply.
`
`PureCircle is not only wrong on the law, it is also wrong on the facts. Contrary
`
`3
`
`
`
`to PureCircle’s assertions, the ‘273 IPR did not challenge the claims under
`
`enablement and written description. In fact, the ‘273 IPR did not raise any
`
`enablement arguments concerning the ‘273 patent or the provisional application.
`
`Accordingly, the Board had no reason to consider whether practicing the claims of
`
`the ‘273 patent required undue experimentation. See Ex. 2002 (lacking any Wands
`
`analysis). The ‘273 IPR merely raised a question as to whether the prior provisional
`
`application provided written description support for a specific claim element of the
`
`‘273 patent. But the claim element at issue in the ‘273 IPR—“wherein the conversion
`
`of Rebaudioside D to Rebaudioside X is at least about 50% complete”—is absent
`
`from the claims of the ‘257 patent. Compare Ex. 2002 at 23-30; Ex. 1001.
`
`PureCircle’s second string argument regarding the Examiner’s notice that the
`
`application that matured into the ‘257 patent was being examined under the pre-AIA
`
`provisions also fails part one of the Advanced Bionics framework. The Examiner
`
`never raised a Section 112 rejection during prosecution of the ‘257 patent. See Ex.
`
`1002. Accordingly, there is no evidence as to which—if any—enablement or
`
`written-description arguments were considered by the Examiner during prosecution.
`
`See Hybrigenics SA v. Forma Therapeutics, Inc., PGR2018-00098, Paper 10 at 20-
`
`21 (PTAB March, 2019) (“[T]he mere absence of a written description rejection does
`
`not establish that the Examiner considered the arguments presented in the Petition.
`
`To find otherwise would potentially suggest that we should apply our discretion
`
`4
`
`
`
`under 325(d) to deny review in every post grant review where written description is
`
`challenged ….”).
`
`II. The Office Erred in a Manner Material to the Patentability of Challenged
`Claim
`Because the written description and enablement arguments presented in the
`
`Petition were not previously presented to the Office, it is not even necessary to
`
`consider the second step of the Advanced Bionics framework. Still, it is evident in
`
`view of the arguments within the Petition itself that the Examiner materially erred
`
`in according the ‘257 patent a May 22, 2012 priority date. Ex. 1002 at 1970.
`
`Applying Becton, Dickinson factor (c), the Examiner did not make any Section 112
`
`rejections and thus there is no evidence that the Office evaluated any enablement
`
`and written description arguments in determining the ‘257 patent’s priority date.
`
`Applying factor (f), the Petition presents substantial evidence that the ‘257 patent’s
`
`claims fail Section 112’s enablement and written description requirements, and
`
`the ‘257 patent is therefore not entitled to the 2012 priority date.
`
`III. Conclusion
`
`The Advanced Bionics framework demonstrates that the Board should decline
`
`to apply its discretion under Section 325(d).
`
`Dated: November 23, 2020
`
`
`
`Respectfully submitted,
`
`/Jason H. Conway/
`Jason H. Conway, Reg. No. 61,381
`Counsel for Petitioner SweeGen, Inc.
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`Under 37 C.F.R. § 42.6(e), the undersigned certifies that on
`
`November 23, 2020, a copy of the foregoing REPLY TO PATENT OWNERS’
`
`PRELIMINARY RESPONSE was served via email on the following:
`
`Stuart E. Pollack
`DLA Piper LLP (US)
`1251 Avenue of the Americas, 27th Floor
`New York, NY 10020-1104
`Phone: 212.335.4964
`Email: stuart.pollack@us.dlapiper.com
`
`Jeffrey R. Cole
`DLA Piper LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701-3799
`Phone: 512.457.7035
`Email: jeff.cole@us.dlapiper.com
`
`PC-257-PGR@dlapiper.com
`
`By: /Jason H. Conway/
`
`Lead Counsel for Petitioner
`Jason H. Conway
`Reg. No. 61,381
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
