Trials@uspto.gov
`571-272-7822
`
`Paper 70
`Date: October 11, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INCYTE CORPORATION,
`Petitioner,
`v.
`CONCERT PHARMACEUTICALS, INC.,
`Patent Owner.
`
`PGR2021-00006
`Patent 10,561,659 B2
`
`
`
`
`
`
`
`
`
`Before CHRISTOPHER G. PAULRAJ, ROBERT A. POLLOCK, and
`DEVON ZASTROW NEWMAN, Administrative Patent Judges.
`NEWMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`

`

`PGR2021-00006
`Patent 10,561,659 B2
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`
`INTRODUCTION
`I.
`Incyte Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting a post-grant review of claims 1–21 of U.S. Patent No. 10,561,659
`B2 (“the ’659 patent”). Concert Pharmaceuticals, Inc., (“Patent Owner”)
`filed a Preliminary Response (Paper 11, “Prelim. Resp.”). Petitioner filed a
`Reply to Patent Owner’s Preliminary Response (Paper 17, “Prelim. Reply”)
`and Patent Owner filed a Preliminary Sur-Reply (Paper 19, “Prelim. Sur-
`Reply”). Based on the record then before us, we instituted trial with respect
`to all challenged claims.1 Paper 20, 49. After institution of trial, Patent
`Owner filed a Request for Rehearing (Paper 23), which was denied (Paper
`25). Patent Owner filed a Response (Paper 37, “Resp.”), Petitioner filed a
`Reply to Patent Owner’s Response (Paper 44, “Reply”), and Patent Owner
`filed a Sur-reply to Petitioner’s Reply (Paper 51, “Sur-reply”). An oral
`hearing was held on February 10, 2022, and the transcript of that hearing is
`entered as Paper 67 (“Tr.”).
`We issued a Final Written Decision concluding that Petitioner did not
`demonstrate by a preponderance of the evidence that each of the challenged
`claims is unpatentable. See Paper 68, 2 (“Dec.” or “Decision”). Petitioner
`timely filed a Request for Rehearing of the Final Written Decision. Paper 69
`(“Reh’g Req.”). For the reasons expressed below, we deny the Request for
`Rehearing.
`
`
`1 Patent Owner disclaimed claim 8 subsequent to filing. See Ex. 2020.
`Hence, claim 8 and the Petition’s Ground 3 challenging only claim 8 are no
`longer at issue in this case.
`
`2
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`PGR2021-00006
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`
`II. STANDARD OF REVIEW
`The party challenging a decision in a request for rehearing bears the
`burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).
`A request for rehearing “must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed.” Id.
`
`III. ANALYSIS
`In the Request for Rehearing, Petitioner contends that the Board erred
`in its obviousness analysis by erroneously interpreting the law and by
`overlooking Petitioner’s arguments and evidence for unpatentability. Reh’g
`Req. 1–10. Petitioner also contends that the Board misapplied 35 U.S.C.
`§ 102(b)(1) to find that certain disclosures were made by a joint inventor and
`therefore did not qualify as prior art. Id. at 10–15. We address each of
`Petitioner’s arguments below.
`
`A. Motivation to Combine Based on Silverman’s Disclosure
`of Compound (I)
`Petitioner contends that: (1) “[t]he Board applied an erroneous legal
`test for motivation to use a known compound,” and (2) “[t]he Board further
`overlooked and misapprehended argument and evidence that [a person of
`ordinary skill in the art (POSA)] would have selected Compound (I) based
`on deuteration at ruxolitinib’s metabolic hot spots.” Reh’g Req. 2. We first
`address Petitioner’s arguments as to the legal standard, followed by
`Petitioner’s arguments as to the evidence presented during the trial.
`Petitioner argues that the Board “improperly required Petitioner to
`establish motivation to (1) ‘select Compound (I)’ from the Silverman
`Formula A compounds” and “(2) ‘select[] the disclosed compound with
`deuteration at only the 2- and 3-Y’ positions over Silverman’s Compound
`
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`127.” Id. at 1. Petitioner argues that it needed only to prove that “a skilled
`artisan would have been motivated to combine the teachings of the prior art
`references to achieve the claimed invention” and that a “lead compound
`analysis” is not required. Id. at 2 (citing Novartis Pharm. Corp. v. West-
`Ward Pharm. Int’l Ltd., 923 F.3d 1051, 1059–60 (Fed. Cir. 2019), at 1059–
`60). According to Petitioner, proper application of Novartis means that
`Petitioner only needed to prove that the ordinary artisan would have found it
`obvious to use any of the compounds disclosed in Silverman’s Formula A,
`and that our preliminary finding along these lines was “sufficient as a matter
`of law” to establish obviousness of the challenged claims. Id. at 1–2 (citing
`Dec. 50). Petitioner alleges that we erred in requiring Petitioner to prove
`that the ordinary artisan would have been motivated to select Compound (I)
`specifically from among the disclosed Formula A compounds. Id. at 2.
` We are not persuaded that we erred in applying the law by requiring
`Petitioner to prove what it alleged in the Petition—i.e., that the ordinary
`artisan would have selected Compound (I), the subject of the challenged
`claims. The Petition asserts that a “POSA would have been motivated to use
`Compound (I), the deuterated analog of ruxolitinib from Silverman, to treat
`[(AA)], which Xing taught could be treated with ruxolitinib, to obtain at least
`the same efficacy as ruxolitinib and/or potentially improved
`pharmacokinetic properties in that treatment.” Pet. 33 (citing Ex. 1007
`¶¶ 38–43, 126–135). Petitioner further argued that “Compound (I) would
`have been ‘a natural choice for further development,’ . . . in treating AA”
`because Silverman specifically disclosed and claimed the compound, and
`because the compound was reported to be more stable metabolically than
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`ruxolitinib. Id. at 34 (quoting Altana Pharma AG v. Teva Pharm. USA, Inc.,
`566 F.3d 999, 1008 (Fed. Cir. 2009)).
`Nowhere in the Petition did Petitioner argue that one of ordinary skill
`in the art would have been motivated to use any of the sixty or more
`compounds disclosed in Silverman; rather, Petitioner introduced Compound
`(I) from Silverman at the beginning of its Petition (id. at 1–3, 11–15) and
`framed its entire argument around Compound (I) alone.2 See Pet., generally.
`As such, the entirety of Petitioner’s arguments regarding the skilled artisan’s
`motivation relied only on Silverman’s disclosure of Compound (I). See id.
`at 33–41. Considering the evidence adduced at trial, we determined that
`Petitioner’s obviousness argument—and, in particular, its focus on
`Compound (I)—was not supported by the evidence of record without the
`2015 Uttamsingh Declaration (Ex. 1045), which did not qualify as prior art.
`Dec. 51–52. We addressed Petitioner’s reasoning under Novartis, that
`motivation can be found where the skilled artisan would have been
`motivated to pursue one compound as one of several potential treatment
`options, and concluded that this reasoning did not apply because Petitioner’s
`case for motivation was stated only in terms of Compound (I) and its
`suitability for further use based on the 2015 Uttamsingh Declaration’s
`conclusions regarding Compound (I)’s metabolic stability. Dec. 58–59.
`
`
`2 To the extent Petitioner argues that its phrasing on page 35 of the Petition
`that “a POSA would have been motivated to use [ruxolitinib’s] deuterated
`analog—particularly Compound (I)—to achieve at least equally efficacious
`treatment of AA” demonstrates that Compound (I) was one of the larger
`number of compounds Petitioner asserted could be used, we are unpersuaded
`as the Petition elsewhere refers to Compound (I) as “the deuterated analog of
`ruxolitinib from Silverman.” See Pet. 33.
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`
`Petitioner now argues that the Petition “established that a POSA
`would have been motivated to pursue Compound (I) as ‘one of several
`potential treatment options’ and ‘to use [ruxolitinib’s] deuterated analog—
`particularly Compound (I)—to achieve at least equally efficacious treatment
`of AA’ as ruxolitinib.” Reh’g Req. 7 (citing Pet. 34–35) (citing Novartis,
`923 F.3d at 1060). In other words, Petitioner asks us to reread the Petition to
`ignore its exclusive focus on why the POSA would have selected Compound
`(I) specifically, and find – despite these arguments – that it would have been
`obvious to use any of Silverman’s compounds, such as Compound (I), and
`ignoring Petitioner’s reasoning about Compound (I)’s metabolic stability.
`See id. at 5–8.
`In sum, Petitioner argues that the Board misapprehended the
`arguments in the Petition as being limited to the use of Compound (I), and
`asks that we recast Petitioner’s focus on Silverman’s Compound (I) to apply
`to the broader genus of compounds within Silverman’s Formula A, which
`disclosed the entire genus of more than 60 deuterated analogs of ruxolitinib.
`See id. at 7–8.
`We cannot craft arguments that were never made. Our reviewing
`court has made clear that the Board may not craft new grounds of
`unpatentability not advanced by the petitioner. Arthrex, Inc. v. Smith &
`Nephew, Inc., 935 F.3d 1319, 1326 (Fed. Cir. 2019). Our “authority is not
`so broad that it allows the PTO to raise, address, and decide unpatentability
`theories never presented by the petitioner” and, thus, we may not “adopt
`arguments on behalf of petitioners that could have been, but were not, raised
`by the petitioner during an IPR.” In re Magnum Oil Tools Int'l, Ltd., 829
`F.3d 1364, 1381 (Fed. Cir. 2016).
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`
`The challenged claims each recite a method for using Compound (I),
`not a method for using any deuterated analog of ruxolitinib. Therefore, to
`prevail on obviousness, Petitioner needed to persuade the Board that “a
`skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.”
`Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007). “The
`presence or absence of a motivation to combine references in an obviousness
`determination is a pure question of fact.” Alza Corp. v. Mylan Labs., Inc.,
`464 F.3d 1286, 1289 (Fed. Cir. 2006).
`Petitioner argued that the specific use of Compound (I) was obvious.
`See, e.g., Pet. 23–24 (“This claimed subject matter is nothing more than the
`obvious substitution of Compound (I), in the treatment of a disease clinically
`established to be treated by ruxolitinib, at doses in a known range.”)
`Petitioner argued that “a POSA would have been motivated to use
`Compound (I) in place of ruxolitinib to treat AA by potential improvements
`in metabolic properties resulting from deuterium substitution at ruxolitinib’s
`metabolic hot spots.” Id. at 37. See also id. at 33, stating the artisan would
`have been “motivated to orally administer tablets of Compound (I)
`according to Silverman to treat AA.” In making these arguments, Petitioner
`had explained its basis for how the skilled artisan “would have been
`motivated to combine the teachings of the prior art references to achieve the
`claimed invention,” which recites the use of Compound (I). Pfizer, 480 F.3d
`at 1361 (emphasis added). Following our analysis under 35 U.S.C.
`§ 102(b)(1) (Dec. 38–42), which led us to excise the information discosed in
`the 2015 Uttamsingh Declaration that was used by Petitioner to identify
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`Compound (I) from the genus of Silverman’s Formula A, we subsequently
`considered the remaining allegations regarding motivation to combine in the
`Petition. Dec. 50–60. This inquiry is a question of fact. Alza, 464 F.3d at
`1289. We found Petitioner’s evidence insufficient on the facts to have
`motivated the artisan to arrive at Compound (I), as recited in the claim. Id.
`Novartis is distinguishable on these facts. In Novartis, the district
`court held
`The proper inquiry is whether a person of ordinary skill would
`have been motivated to modify the prior art disclosing use of
`temsirolimus to treat advanced RCC with the prior art
`disclosing everolimus. This question was answered
`affirmatively when the district court found that a person of
`ordinary skill “would have been motivated to pursue
`everolimus as one of several potential treatment options for
`advanced solid tumors, including advanced RCC.”
`Novartis, 923 F.3d at 1051 (emphasis added). Here, Compound (I) was not
`disclosed in the prior art as “one of several potential treatment options,” but
`was one of over 60 compounds within Silverman’s Formula A, which was
`itself one of other potential treatment options in the field, including
`ruxolitinib and other ongoing efforts to develop existing treatments. Ex.
`1002, Tables 1–2 (providing “Exemplary Embodiments of Formula 1”); See
`Ex. 2056, Tables 1, 2; Ex. 2041, 1. Second, in Novartis, everolimus had
`itself been identified as a potential treatment option, despite the lack of
`clinical trial data. Novartis at 1061. Here, absent the disclosure in the 2015
`Uttamsingh Declaration, Compound (I) had not been identified from the
`genus of Silverman’s Formula A. Moreover, the evidence of record showed
`that because deuteration of compounds was not predictable, the ordinarily
`skilled artisan without the benefit of the 2015 Uttamsingh Declaration’s
`disclosure would not have been able to predict that Compound (I) would
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`have been successful. Dec. 51–60. On these facts we concluded that the
`artisan would not have been motivated to arrive at the claimed method,
`which identified Compound (I). Dec. 60.
`Even if we were to conclude that our factual findings support that the
`skilled artisan would have been motivated to combine the references to
`arrive at the claimed invention, the record provides insufficient reason to
`support a reasonable expectation of success in doing so absent the data from
`the 2015 Uttamsingh Declaration.
`Regarding the imprecise outcome of deuteration, we found:
`if deuteration results were entirely predictable, the data in the
`2015 Uttamsingh Declaration would not have been necessary to
`generate to overcome obviousness or in general to assess the
`performance of the compounds. See also, e.g., Ex. 1033, 14
`(Discussing the imperfect science of deuteration: “[i]t is often
`falsely assumed that one simply replaces a C−H pair that is
`subject to oxidation with a C−D pair so that stability ensues.
`This naive view is surprisingly pernicious and not one by which
`practitioners of this approach are burdened.”).
`Dec. 58. On this point, Petitioner argues that, even if the Board had applied
`the correct legal standard to the argument presented in the Petition, by
`requiring only that Petitioner show that the ordinary artisan would have been
`motivated to make any of the compounds disclosed in Formula A (which
`included Compound (I)), we nonetheless “overlooked substantial argument
`and evidence for selecting Compound (I) specifically.” Reh’g Req. at 8
`(emphasis omitted). Petitioner argues our Decision did not address
`“substantial evidence” that “deuterating at metabolic hotspots was well
`known in the art and provided motivation to select Compound (I) over the
`other compounds in Silverman even in the absence of the 2015 Uttamsingh
`Declaration.” Id. at 8–9 (citing Pet. 37, 40, 62). Petitioner further argues
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`that “the Board did not address Dr. Ortiz De Montellano’s admission that
`deuteration at a non-metabolic hot spot, i.e., Compound 127’s additional
`ninth position, ‘would probably not be relevant.’” Id. at 10 (citing Paper 44,
`21; quoting Ex. 1171, 40:18–41:5).
`We do not agree that we overlooked Petitioner’s metabolic hotspots
`arguments and evidence not related to the 2015 Uttamsingh Declaration. In
`our Decision, we found that “[t]he sole rationale that could potentially be
`separated [from the 2015 Uttamsingh Declaration] is that Compound (I) was
`deuterated at ruxolitinib’s metabolic hotspots, and was reported to have
`improved metabolic properties in vitro.” Dec. 54. Accordingly, we
`considered the evidence presented in the Petition, finding that “Dr.
`Patterson’s testimony does not provide a sufficient evidentiary basis for a
`finding that the skilled artisan would have pursued use of Compound (I)
`independent of the information provided by the 2015 Uttamsingh
`Declaration.” Id. at 55. Moreover, we considered Petitioner’s citation to
`Silverman’s discussion of known ruxolitinib metabolites, finding that
`Silverman did not “provide sufficient motivation to a skilled artisan to have
`selected the disclosed compound with deuteration at only the 2- and 3-Y
`positions.” Id. at 57–58 (citing Ex. 1002, 3:7–12).
`Dr. De Montellano’s testimony that deuterating at an additional ninth
`position “would probably not be relevant” simply reinforces that deuteration
`was not entirely predictable, and thus does not alter our analysis that the
`evidence of record was insufficient to support the ordinarily skilled artisan’s
`motivation to select Compound (I) as Petitioner argued. See id. at 58.
`Accordingly, we did not overlook Petitioner’s metabolic hotspots argument.
`Rather, we considered the evidence and came to a conclusion that Petitioner
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`does not agree with. Because we did not overlook or misapprehend
`Petitioner’s arguments presented in the Petition as to obviousness, we deny
`Petitioner’s Request for Rehearing.
`
`
`35 U.S.C. § 102(b)(1) Exception to prior art
`B.
`Petitioner contends that the Board (1) misapprehended the legal
`standard for establishing a § 102(b) exception (Reh’g Req. 11–12), and (2)
`misapplied the law of inventorship with respect to Dr. Uttamsingh. See id.
`at 12–15. We first address Petitioner’s arguments as to the legal standard,
`followed by Petitioner’s arguments as to the inventorship of Dr. Uttamsingh.
`First, Petitioner contends that the Board misapprehended the legal
`standard for establishing a prior art exception under § 102(b) by “improperly
`adopting a presumption for correct inventorship from Acromed Corp. v.
`Sofamor Danek Group, Inc., which was expressly based on ‘a presumption
`of validity [under] 35 U.S.C. § 282.’” Id. at 11 (citing 253 F.3d 1371, 1379
`(Fed. Cir. 2001); Dec. 34). Petitioner argues that Dr. Uttamsingh’s status
`was “reflected in the provisional cover sheet,” (where she was not listed as
`an inventor) and “[t]he signed oath and face of the patent [where she was
`listed as an inventor] are not contrary evidence.” Id. at 12 (internal citations
`omitted). Petitioner also argues that “presumptions based on § 282 do not
`apply in PGR proceedings” and cites two Board decisions in support,
`Taiwan Semiconductor Mfg. Co., Ltd. v. DSS Tech. Mgt., Inc. (“Taiwant
`Semiconductor”), IPR2014-01030, Paper 28, at 6 (PTAB Nov. 30, 2015);
`RF Controls, LLC, v. A-1 Packaging Sols., Inc. (“RF Controls”), IPR2014-
`01536, Paper 10, at 8 (PTAB Mar. 30, 2015).
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`
`We do not agree with Petitioner’s argument that we misapplied the
`case law as to the presumption of inventorship. Petitioner is correct that we
`held that Acromed frames the presumption of inventorship as associated with
`the presumption of validity. See 253 F.3d at 1379. Acromed is binding
`precedent and holds that the presumption of validity, which is derived from
`§ 282, includes a “presumption that its named inventors are the true and only
`inventors” (hereafter “presumption of correct inventorship.” Id. We find
`further support for the presumption of inventorship in the Manual of Patent
`Examining Procedure (MPEP), which explains the presumption also applies
`to inventors named on patent applications pending before the Office. See
`Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir.
`1997) (finding that the burden of proof for inventorship is the same under 35
`U.S.C. § 116 (which governs patent applications), as section 256 (which
`covers issued patents)); see also MPEP § 2157 (“The Office presumes that
`the named inventor or joint inventors in the application are the actual
`inventor or joint inventors to be named on the patent.”). In the absence of
`binding case law to the contrary, we are not persuaded that we misapplied
`the existing case law on these facts and decline Petitioner’s invitation to
`apply a different standard for AIA proceedings.
`Petitioner’s allegation that the presumption of validity does not apply
`to post-grant review proceedings relies on statements in the cited Board
`proceedings referring to the presumption of validity as applied to the
`challenged claims, not to the presumption of correct inventorship
`acknowledged in Acromed. See Taiwan Semiconductor, Paper 28, 6
`(addressing claim construction and stating “We do not apply a presumption
`of validity, and we evaluate Petitioner’s burden of proof under the
`
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`preponderance of evidence standard.”); RF Controls, Paper 10, 8 (“In an
`inter partes proceeding there is no presumption of [claim] validity,
`therefore, we will not be applying a rule of construction with an aim to
`preserve the validity of claims)3. Neither of these cases supports Petitioner’s
`argument that the presumption of correct inventorship does not apply to
`post-grant review proceedings, and Petitioner has cited no binding authority
`for this proposition.
`Moreover, as discussed further below, our conclusion with regard to
`Dr. Uttamsingh’s inventorship status was not only based on the presumption
`of inventorship. We specifically held that “regardless of the burden, we find
`that the evidence supports a conclusion that Dr. Uttamsingh is a joint
`inventor of the ’659 patent.” Dec. 35.
`We further do not agree with Petitioner that we should find the
`provisional cover sheet, which did not list Dr. Uttamsingh as an inventor, to
`be more persuasive evidence than the signed oath of Dr. Uttamsingh on the
`utility application. Reh’g Req. 11–12. Our governing statute requires that
`“each individual who is the inventor or a joint inventor of a claimed
`
`
`3 We further note that Taiwan Semiconductor cites for support Cisco Sys.,
`Inc. v. AIP Acquisition, LLC, Case IPR2014-00247, Paper 17, slip op. at 3–4
`(PTAB June 26, 2014), which further clarifies that the inapplicability of the
`presumption of validity refers to the challenged claims (“It should be noted,
`however, that there still would be no presumption of validity in this
`proceeding and Petitioner’s burden of proof is still by a preponderance of the
`evidence. Also, we will not be applying a rule of construction with an aim to
`preserve the validity of claims.”). In addition, the Board has previously held
`that the presumption of inventorship applies in Ellsworth v. Moore,
`Interference No. 104,528, Paper 54 at 13 (PTAB Nov. 20, 2001)
`(informative) (“There is a presumption that the inventorship identified in an
`application or a patent is correct.”).
`
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`invention in an application for patent shall execute an oath or declaration in
`connection with the application.” 35 U.S.C. § 115; see also 35 U.S.C. § 116
`(“When an invention is made by two or more persons jointly, they shall
`apply for patent jointly and each make the required oath”). “A person may
`not execute an oath or declaration for an application unless that person has
`reviewed and understands the contents of the application, including the
`claims, and is aware of the duty to disclose to the Office all information
`known to the person to be material to patentability.” 37 C.F.R. § 1.63(c).
`Accordingly, the statute and rules set forth a number of requirements met by
`the oath filed with a nonprovisional patent application. These requirements
`do not apply to provisional applications, as provisional applications do not
`include an oath, nor claims. See 35 U.S.C. § 111(b); MPEP 602.01(a)(I).
`Accordingly, we decline Petitioner’s invitation to disregard Dr.
`Uttamsingh’s oath of inventorship as compared to the provisional
`application cover sheet. Finally, we addressed Dr. Uttamsingh’s relevant
`testimony in our Decision, and Petitioner merely disagrees with that
`analysis. See Dec. 36–37.
` Second, Petitioner argues that “[t]he Board misapplied the law of
`inventorship as Dr. Uttamsingh did not conceive of or contribute to any
`claimed subject matter.” Reh’g Req. 12 (emphasis omitted). Specifically,
`Petitioner argues that Dr. Uttamsingh’s work in identifying the metabolic
`stability of Compound (I) “is not a contribution to the claimed use of
`Compound (I) to treat hair loss, as required for inventorship.” Id. at 13.
`Petitioner argues that “Dr. Uttamsingh testified that she did not have the idea
`of using Compound (I) to treat hair loss or any other subject matter
`claimed.” Id. at 15 (citing Ex. 1172, 19:14–25:21, 75:7–11; Paper 44, 8–9).
`
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`Petitioner argues the Board “misapprehends Pannu v. Iolab Corp.” by
`finding that Dr. Uttamsingh’s contributions “were ‘not insignificant in
`quality’” and “did ‘more than merely explain to the real inventors well-
`known concepts and/or the current state of the art.’” See id. (citing Dec. 36–
`37 (quoting Pannu, 155 F.3d 1344 (Fed. Cir. 1998)). Petitioner cites to
`other cases in which the inventors of products were not considered inventors
`of methods for using the products. See id. at 14 (citing Gen. Elec. Co. v.
`Wilkins, 750 F.3d 1324, 1332 (Fed. Cir. 2014); BJ Servs. Co. v. Halliburton
`Energy Services, Inc., 338 F.3d 1368, 1373–74 (Fed. Cir. 2003).
`We are not persuaded that we misapplied the law in determining that
`Dr. Uttamsingh is a properly named inventor. In the Decision, we addressed
`Dr. Uttamsingh’s testimony regarding inventorship of the claimed method.
`See Dec. 37 (“Petitioner’s examination of Dr. Uttamsingh about the
`inventorship statements made within the ’827 provisional do not evoke the
`nature of Dr. Uttamsingh’s contribution to the utility of the compound and
`the claimed treatment method.”). For the same reasons as those presented in
`the Decision, we find unpersuasive Petitioner’s argument that Dr.
`Uttamsingh’s testimony indicates that her contributions were insignificant to
`the claimed method, which recites the use of Compound (I) as identified by
`Dr. Uttamsingh to be of particular utility. Dec. 33–37.
`The cases cited by Petitioner do not lead to a different conclusion.
`The cases all refer to the presumption that the named inventors are the true
`inventors. See Gen. Elec. Co., 750 F.3d at 1229; see BJ Servs. Co., 338 F.3d
`at 1373; see Pannu, 155 F.3d at 1349. As discussed above, we determine
`that the same presumption that applies to issued patents and pending
`applications applies to issued patents in AIA proceedings. See supra pp. 7–
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`8. Petitioner does not provide evidence sufficient to overcome the
`presumption, particularly in light of our factual findings on Dr. Uttamsingh’s
`contributions in identifying Compound (I) as metabolically superior as
`addressed in our Final Decision. Dec. 33–37. Because Petitioner does not
`show that we misapprehended or overlooked the law or Petitioner’s
`arguments and evidence as to inventorship, we deny Petitioner’s Request for
`Rehearing.
`
`
`IV. CONCLUSION
`For the foregoing reasons, the Request for Rehearing is denied.
`
`V. ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`In summary:
`Claims4
`35
`
`U.S.C. §
`
`1–7, 9–21 103
`
`1–7, 9–21 103
`
`Overall
`Outcome
`
`
`
`Reference(s)/Basis
`
`Silverman, Xing,
`Ruxolitinib
`Prescribing
`Information
`
`
`Silverman,
`Christiano, Ni
`
`
`Claims
`Shown
`Unpatentable
`
`
`Claims
`Not Shown
`Unpatentable
`1–7, 9–21
`
`
`
`
`
`1–7, 9–21
`
`1–7, 9–21
`
`
`4 Ground 3 is no longer at issue in this case as Patent Owner filed a statutory
`disclaimer of claim 8 (see Ex. 2020). 37 C.F.R. § 42.207(e).
`
`16
`
`

`

`PGR2021-00006
`Patent 10,561,659 B2
`
`
`
`
`FOR PETITIONER:
`Thomas Irving
`Mark Feldstein
`Trenton Ward
`Drew Christie
`Catherine Corser
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
`Tom.irving@finnegan.com
`Mark.feldstein@finnegan.com
`Trenton.ward@finnegan.com
`Drew.christie@finnegan.com
`Collette.corser@finnegan.com
`
`
`FOR PATENT OWNER:
`
`Marta Delsignore
`Gerard Cedrone
`GOODWIN PROCTER LLP
`mdelsignore@goodwinprocter.com
`gcedrone@goodwinlaw.com
`
`17
`
`