Paper No. 13
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SWEEGEN, INC.
`Petitioner,
`
`v.
`
`PURECIRCLE SDN BHD AND PURECIRCLE USA INC.,
`Patent Owners.
`_____________
`
`Case No. PGR2020-00070
`U.S. Patent No. 10,485,257
`_____________
`
`Dated: December 3, 2020
`
`PATENT OWNERS' AUTHORIZED SURREPLY
`SUPPORTING PATENT OWNER'S PRELIMINARY RESPONSE
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SWEEGEN, INC.
`Petitioner,
`
`v.
`
`PURECIRCLE SDN BHD AND PURECIRCLE USA INC.,
`Patent Owners.
`_____________
`
`Case No. PGR2020-00070
`U.S. Patent No. 10,485,257
`_____________
`
`Dated: December 3, 2020
`
`PATENT OWNERS' AUTHORIZED SURREPLY
`SUPPORTING PATENT OWNER'S PRELIMINARY RESPONSE
`
`
`
`I.
`
`INTRODUCTION.
`Petitioner's reply brief ignores the common issues raised by Petitioner in both
`
`this PGR regarding the '257 Patent and the prior IPR (IPR2019-01017) regarding the
`
`parent '273 Patent. The threshold issue in both proceedings is whether these patents
`
`are entitled to their priority dates. The fact that both proceedings cannot proceed
`
`unless Petitioner prevails on its priority-date argument shows that "substantially the
`
`same … arguments" are addressed in both proceedings, and that Petitioner's priority-
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`date arguments were "previously presented to the Office," as required by § 325(d).
`
`Petitioner also overlooks a key purpose of § 325(d): to combat "the potential
`
`for abuse of the review process by repeated attacks on patents." General Plastic
`
`Indus. Co. v. Canon K.K., IPR2016-01357, Paper 19, 17 (P.T.A.B. Sept. 6, 2017)
`
`(precedential). "The absence of any restrictions on follow-on petitions would allow
`
`petitioners the opportunity to strategically stage their prior art and arguments in
`
`multiple petitions, using [Board] decisions as a roadmap, until a ground is found that
`
`results in the grant of review." Id. Petitioner has done just that: the same claim term
`
`supporting Petitioner's PGR priority arguments—"UDP-glucosyltransferase"—is in
`
`the parent '273 Patent's claims. Petitioner's strategic decision to stage its priority-
`
`date arguments to get a second bite at the apple is precisely what the Board sought
`
`to prevent in its precedential General Plastics and Advanced Bionics decisions.
`
`II.
`
`THE TWO PROCEEDINGS' PRIORITY ARGUMENTS OVERLAP.
`
`1
`
`
`
`There is substantial overlap between this PGR and Petitioner's prior IPR. In
`
`this PGR, the threshold issue is whether Petitioner can change the '257 Patent's
`
`priority date so that the AIA applies (Petition at 3-4), and U.S. Publication No.
`
`2015/0031869 A1 (published more than two years after the '257 Patent's priority
`
`date) becomes prior art. (Id. at 69.) Petitioner's priority argument is that the claim
`
`term "UDP-glucosyltransferase" comprises numerous enzymes that have mutant
`
`forms, and that the '257 Patent does not satisfy § 112 because it does not describe or
`
`enable those mutants. (Petition at 29.) If Petitioner's priority argument fails, the
`
`Board must deny institution of this PGR because the '257 Patent is a pre-AIA patent.
`
`Moreover, if its argument fails, US2015/0031869 is not prior art.
`
`In the prior IPR, the threshold issue was likewise whether the parent '273
`
`Patent (sharing the same specification as the '257 Patent) was entitled to its priority
`
`date and whether a publication (called "WO227") dated after the '273 Patent's
`
`priority date qualified as prior art. (Ex. 2002 at 20-21.) According to Petitioners, the
`
`'273 Patent's claims did not deserve their priority date under § 112 because Patent
`
`Owner did not prove that it achieved conversion above 50% with its new process as
`
`of its priority date. (Id. at 26.) The Board rejected that argument, finding the claims
`
`of the parent '273 Patent entitled to that patent's priority date. (Ex. 2002 at 30.)
`
`Significantly, all of the parent '273 Patent's claims include the same "UDP-
`
`glucosyltransferase" claim term that forms the basis for Petitioner's § 112 arguments
`
`2
`
`
`
`in this PGR petition. The '273 and '257 Patents also share the same specification. As
`
`a result, Petitioner could have made these exact same arguments in the previous IPR.
`
`Petitioner chose not to do so, however, and instead argued that a "UDP-
`
`glucosyltransferase" was so well-known to a POSITA that the claims were obvious.
`
`(Ex. 2002 at 12-13.)
`
`In short, Petitioner revisits the priority question the Board rejected in the prior
`
`IPR. Moreover, Petitioner's § 112 arguments concerning "UDP-glucosyltransferase"
`
`apply equally to the '273 and '257 Patent claims. While Petitioner's priority
`
`challenges differ in the two proceedings, these differences stem from Petitioner's
`
`decision to withhold arguments it now asserts to gain a strategic advantage. Indeed,
`
`there is such substantial overlap between Petitioner's priority arguments in this PGR
`
`and the prior IPR that allowing Petitioner to reargue priority would defeat General
`
`Plastics' goal of preventing "the potential for abuse of the review process by repeated
`
`attacks on patents" and instead "would allow petitioners the opportunity to
`
`strategically stage their … arguments in multiple petitions, using [Board] decisions
`
`as a roadmap, until a ground is found that results in the grant of review." IPR2016-
`
`01357, Paper 19, 17. Becton Dickinson factors (a), (b), and (d) favor denial.
`
`Petitioner argues that § 325(d) does not apply because it made only a written-
`
`description challenge in the IPR and did not address the Wands factors. (Paper 12 at
`
`4.) Although Petitioner's previous IPR challenge was not explicitly framed as an
`
`3
`
`
`
`enablement challenge, its essence was that Patent Owner had not achieved the
`
`claimed above-50% conversion. Indeed, Petitioner prefaced a description of its
`
`challenge with a statement describing the standard for enablement. (Ex. 2007 at 39
`
`("To be enabling under 35 U.S.C. § 112(1), the disclosure in the provisional
`
`application must be sufficient for the POSITA to practice the claimed invention
`
`without undue experimentation.").) And the Board recognized the underlying
`
`enablement issue, citing Patent Owner's argument that the claimed method "'is
`
`routinely used by PureCircle, and by SweeGen, to convert Rebaudioside D to
`
`Rebaudioside [X] with at least about 50% conversion' and is, therefore, enabled."
`
`(Ex. 2002 at 29.) While Petitioner chose to ignore Wands in the IPR, the Board in
`
`Advanced Bionics did not require identical arguments to be made when applying §
`
`325(d), but only "substantially the same arguments." See Pharmacosmos A/S v.
`
`American Regent, Inc., PGR2020-00009, Paper 17, 14-15 (P.T.A.B. Aug. 14, 2020)
`
`(rejecting argument that "the Examiner never formally construed" a claim term when
`
`the substance of the argument was effectively the same). Indeed, in Pharmacosmos,
`
`the Board held that prior arguments regarding enablement warranted an institution
`
`denial for a parallel written-description challenge, despite the fact that there had been
`
`no written-description challenge in the previous matter before the Office. Id. at 20.
`
`III. THE '257 PATENT HAS ALREADY BEEN FOUND TO BE PRE-AIA.
`As detailed in Patent Owner's Preliminary Response, the '257 Patent's claims
`
`4
`
`
`
`were already found to be pre-AIA, meaning the Examiner found they were entitled
`
`to the priority date. (Paper 10 at 62, citing Ex. 1002 p.1970 & case law). Under the
`
`MPEP that guided examiners in 2018, the examiners were directed to make this
`
`determination, which is described by the MPEP as "critical," and one for which "care
`
`must be taken to accurately determine whether AIA or pre-AIA … applies …."
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`MPEP §§ 2159 & 2159.03 (Rev. 8, Jan. 2018); see also MPEP § 706.02(a).
`
`Petitioner diminishes the Examiner's pre-AIA finding, and instead argues that
`
`the Examiner must issue a § 112 rejection for his pre-AIA finding to be considered
`
`in a § 325(d) analysis. (Paper 12 at 4.) Petitioner is wrong: the Board has ruled that
`
`an Examiner's amendment proved that the Examiner considered § 112 despite the
`
`lack of a rejection, Apple, Inc. v. Seven Networks, Inc., IPR2020-00425, Paper 10,
`
`12-13 (P.T.A.B. Sept. 1, 2020), and that an Examiner's consideration of enablement
`
`showed she already considered written description, despite the lack of a written-
`
`description rejection, Pharmacosmos, supra, at 20. The Examiner's finding that the
`
`'257 Patent is a pre-AIA patent should be given due weight, and provides an
`
`additional grounds for rejection under § 325(d).
`
`Under SAS, finding an AIA patent here then requires review of § 101 grounds
`
`where Petitioner could not articulate a law of nature, and § 102 grounds relying on
`
`shoddy date and a reference already considered in the IPR. Thus, instituting "would
`
`not be an efficient use of the Board's time and resources." Pharmacosmos at 29.
`
`5
`
`
`
`Dated: December 3, 2020
`
`Respectfully submitted,
`DLA PIPER LLP (US)
`By: /Stuart E. Pollack/
`
`Stuart E. Pollack (USPTO Reg. No. 43,862)
`DLA Piper LLP (US)
`1251 Avenue of the Americas
`27th Floor
`New York, NY 10020-1104
`Phone: (212) 335-4964
`Facsimile: (212) 884-8464
`Email: stuart.pollack@us.dlapiper.com
`
`Jeffrey R. Cole (USPTO Reg. No. 56,052)
`DLA Piper LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701-3799
`Phone: 512-457-7035
`Facsimile: (512) 721-2285
`Email: jeff.cole@us.dlapiper.com
`
`Attorneys for Patent Owners
`PureCircle SDN BHD and PureCircle USA
`Inc.
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6 and 42.120, the undersigned certifies that on
`
`December 3, 2020, a complete copy of PATENT OWNERS' AUTHORIZED
`
`SURREPLY SUPPORTING PATENT OWNER'S PRELIMINARY RESPONSE
`
`was sent to the Petitioner via email to the address of record as follows:
`
`Jason H. Conway
`Elizabeth E. Millard
`John R. Schroeder
`STINSON LLP
`Jason.Conway@stinson.com
`Elizabeth.millard@stinson.com
`John.schroeder@stinson.com
`
`Attorneys for Petitioner
`SweeGen, Inc.
`
`Date: December 3, 2020
`
`By:
`
`/Stuart E. Pollack/
`Stuart E. Pollack (USPTO Reg. No. 43,862)
`DLA Piper LLP (US)
`1251 Avenue of the Americas
`27th Floor
`New York, NY 10020-1104
`Phone: (212) 335-4964
`Facsimile: (212) 884-8464
`Email: stuart.pollack@us.dlapiper.com
`
`7
`
`
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