Takeaway: A petition that relies upon a rationale of obviousness that was overcome during prosecution should address, in the first instance, any arguments that successfully overcame that rationale during prosecution.

In its Decision, the Board denied institution of inter partes review, finding that Petitioner did not establish a reasonable likelihood of prevailing with respect to any of challenged claims 1-15 of the ‘799 patent.  The ‘799 patent “relates to antiparasitic pharmaceutical compositions said to be useful for treating flea infestation on pets, particularly dogs and cats.”

Initially, the Board noted that two prior art references relied upon by Petitioner were not prior art. First, the Board stated that the reference Bonneau was published after the filing date of the application that matured into the challenged patent.  Second, Sirinyan ‘387 was not prior art because the PCT application on which it is based was not published in English and the § 371 filing date was after the ’799 patent’s filing date.

Petitioner relied upon Bonneau to establish facts related to experimental testing. However, the Board held that “[e]xperimental work described by Bonneau is not admissible at this stage to prove the truth of the experimental work.”  Petitioner argued Bonneau was not hearsay because it was an admission of Patent Owner, but the Board was not persuaded.

The Board then addressed Petitioner’s “[a]lternative phraseology” in several grounds, stating that such alternative grounds were discouraged. Thus, the Board indicated it would consider those grounds based on all evidence cited rather than considering “‘grounds’ involving less than all the evidence cited.”

Next, the Board held that Patent Owner’s evidence of alleged unexpected results was hearsay at this stage of the proceeding. “The content of the ‘799 patent may be relied upon to establish what is described in the patent, but it may not in this inter partes proceeding be relied upon to establish the truth of what is described.”

Patent Owner also argued that Petitioner was merely re-arguing the same points argued during prosecution, and that accordingly, the Petition should be denied. The Board stated that it has discretion to take such arguments into account when deciding institution.  In this case, the Board decided to consider Grounds 1 and 2 on their merits, but decided to deny Ground 3 because it asserted the “same or substantially the same prior art [that] was previously presented to, and considered by, the Office.”

Turning to claim construction, the Board addressed Petitioner’s argument that one phrase recited in the claims (“it being understood that said composition is free of C1-C4 alcohol”) was “nonsense” that did not limit the claims.  The Board was not persuaded, finding that although the argument may be “superficially plausible, it does not withstand penetrating analysis.”  The Board noted that all limitations must be considered in evaluating obviousness.  In addition, the Board noted that the ‘799 patent referenced a prior art EP application in relation to the limitation at issue, finding it “curious” that the EP application was not made part of the record.  The Board took official notice of the EP application, making it Exhibit 3001 and relying upon the EP application in construing the claims.  Ultimately, the Board found that it “need not decide whether any other ‘C1-C4 alcohol’ is excluded from the scope of claim 1,” and that the question was what one of ordinary skill in the art would understand.

Turning to the first asserted ground, the Board was not persuaded with respect to Petitioner’s alleged rationale to combine the references. In this regard, the Board found that the references disclose “different purposes for which the Saito ‘125 solvent and the Huet ‘333 co-solvent are used,” and that they would not be considered equivalents.

Regarding the second ground, the Board was not persuaded, finding that Petitioner had not “identified persuasive evidence that would have provided a reason for eliminating the ‘C1-C4 alcohol’ from Huet ‘333.”  The Board noted that other “unanswered factual matters,” particularly concerning what a person of skill in the art would have expected in the proposed combination, made the proposed combination questionable.

With respect to the third ground, the Board stated that Petitioner relied upon the same arguments set forth by the Examiner during prosecution. However, Petitioner failed to address the Examiner’s reasons for allowance based on alleged unexpected results.  The Board indicated that it would be unfair to impose on Patent Owner “in the first instance the burden of establishing unexpected results in a trial” when Petitioner “was aware of the unexpected results showing which the Examiner found persuasive.”  Thus, the Board found that Petitioner should have addressed such alleged unexpected results in the first instance.

Merial Limited v. Virbac, IPR2014-01279
Paper 13: Decision Denying Institution of Inter Partes Review
Dated: January 22, 2015
Patent: 8,501,799 B2
Before: Fred E. McKelvey, James T. Moore, and Linda M. Gaudette
Written by: McKelvey