Takeaway: The Board can exercise discretion in granting a motion for joinder and may modify a schedule for a proceeding in response to Patent Owner’s argument that joinder may not permit adequate time for discovery.

In its Decision, the Board granted institution of inter partes review of claims 10, 17, and 18 of the ’550 patent. The Board granted Petitioner’s Motion for Joinder to join the instant proceeding with another proceeding filed by Petitioner, IPR2014-00513 (“the ’513 proceeding”).

The ’550 patent relates to using Mycobacterium smegmatis porin (Msp) to detect analytes in liquid media. An analyte can be detected by measuring an ion current as the analyte interacts with an Msp tunnel to provide a current pattern. A “blockade” is evidenced by a change in ion current that is distinguishable from noise fluctuations and is usually associated with the presence of an analyte molecule at the pore’s central opening.

In the ’513 proceeding, the Board construed claim 1, from which claim 10 depends, as requiring that an analyte, if present, must translocate, that is, move, from the first medium through the Msp to the second medium, when the electric field is applied. Neither Petitioner nor Patent Owner contested this construction.

Petitioner alleged claim 10 is obvious over Church in view of the abstract of Gundlach or Butler and claims 17 and 18 are obvious over Church in view of the abstract of Gundlach.

The Board first considered the obviousness of claim 10 over the ’782 patent and Butler. Petitioner alleged that the ’782 patent discloses methods having all of the steps and features of claim 10 except the use of an Msp. Petitioner argued that an ordinary artisan would have been motivated to modify the ’782 patent’s methods to incorporate Butler’s mutant MspA porin, given the references’ expressed common goals. Patent Owner alleged that Butler expresses skepticism regarding whether its results involved DNA translocation and cautions that mechanisms other than translocation may have been responsible for the results of its experiments. The Board agreed with Petitioner, stating that obviousness does not require absolute predictability of success. The Board noted that Butler describes a single specific protein that exhibits properties with those required by the ’782 patent in its nanopore-based nucleic acid analytical methods. Thus, the person of ordinary skill need only have substituted Butler’s porin for the nanopores described in the ’782 patent. The Board determined that Petitioner has shown a reasonable likelihood of prevailing in its obviousness challenge to claim 10 of the ’550 patent.

Next, the Board considered the obviousness of claims 10, 17, and 18 over the ’782 patent and the abstract of Gundlach. Petitioner argued that an ordinary artisan would have been motivated to modify the ’782 patent’s methods to incorporate a mutant MspA porin such as that disclosed in the abstract of Gundlach. Patent Owner argued that wild-type and mutant MspA porins of Gundlach had not achieved the DNA translocation capacity required in the method for the ’782 patent. The Board concluded that Gundlach merely proposes strategies by which a potentially useful porin might be obtained by modifying existing wild-type or mutant MspA porins, rather than disclosing a specific protein like Butler, supra. Thus, the Board agreed with Patent Owner that Petitioner failed to establish a reasonable likelihood of prevailing in its obviousness challenge to claims 10, 17, and 18 of the ’550 patent based on the ’782 patent and the abstract of Gundlach.

Patent Owner argued that the Board should deny the petition under 35 U.S.C. § 325(d) because the same prior art arguments were previously presented to the Board in a concurrent Petition, IPR2015-00512 (’512 proceeding) that advances additional challenges to the claims of the ’550 patent. Patent Owner argued that the Petition should be denied because granting it effectively provides Petitioner with another attempt to correct deficiencies in the ’512 Petition. The Board noted that the decision whether to deny a petition under § 325(d) is discretionary. The Board stated that the challenge to claim 10 based on the ’782 patent and Butler did not present substantially the same arguments as presented in the ’512 Petition.

Turning to the joinder issue, Petitioner argued that the ’513 proceeding and the instant proceeding challenge the same claims of the same patent, and present overlapping prior art. Patent Owner argued that 35 U.S.C. § 315(c) does not authorize joinder of grounds presented in different petitions by the same party. Patent Owner argued that (1) the grounds presented in the two proceedings, anticipation versus obviousness, are sufficiently different that discovery and briefing will not be simplified, (2) the schedule of the two proceedings cannot be reconciled without curtailing Patent Owner’s response and discovery periods, and (3) granting joinder would allow Petitioner to circumvent the rules. The Board elected to exercise its discretion to grant Joinder because the two proceedings involve the same parties, the same claims of the same patent, and both proceedings cite the Butler reference. Thus, the two proceedings involve common issues. The Board dismissed Patent Owner’s concern of abuse of the joinder rule since there is no copending infringement action involving the claims of the ’550 patent. Regarding Patent Owner’s scheduling concern, the Board modified the schedule of the proceeding to allow Patent Owner a reasonable period to respond to the ground instituted in the instant proceeding.

Oxford Nanopore Technologies LTD. v. University of Washington and UAB Research Foundation, IPR2015-00057
Paper 10: Decision Granting Joinder and Instituting Inter Partes Review
Dated: April 27, 2015
Patent 8,673,550
Before: Francisco C. Prats, Jacqueline Wright Bonilla, and Sheridan K. Snedden
Written by: Prats