Takeaway: The Board cannot have misapprehended or overlooked a basis for why prior art anticipates or renders obvious a patent when the basis is first presented in a Request for Rehearing of the Board’s Decision denying institution.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision denying institution of claims 43, 57, and 58 of the ’475 patent as anticipated by the ’837 patent. The Board had instituted review of claims 43, 54-55, 57-58, and 66 based on obviousness over combinations of prior art.

According to 37 C.F.R. §42.71(d), a party requesting rehearing has the burden of showing a decision should be modified by specifically identifying all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion or reply.

Petitioner argued that the Board overlooked that the ’837 patent discloses that the polymeric matrix “releases substantially all of said drug within about ten hours after such immersion” as recited in claim 43 of the ’475 patent. The Board had construed this limitation to mean that at least 80% of the drug has been released after ten hours. The ’837 patent fails to include any data past seven hours, and only extrapolates data up to eight hours. However, Petitioner argued that a person of ordinary skill in the art could have extrapolated the slope of the line depicted in the graph of Fig. 1 of the ’837 patent to conclude that at least 80% of the drug would be released by ten hours. The Board rejected this argument because it was not presented in the Petition and, therefore, could not have been misapprehended by the Board.

Petitioner also argued that the board misapprehended or overlooked the ’837 patent’s disclosure that the drug should be released in “not less than about two hours” and teaching of a dosage form suitable for a wide range of release times. The Board reasoned that Petitioner failed to provide any rationale of how this would teach that 80% of the drug would be released by ten hours.

Thus, the Board concluded that Petitioner did not meet the burden required under § 42.71(d) by failing to establish that the Board had overlooked or misapprehended any matter that requires modification of the Decision to deny institution.

Purdue Pharma L.P. v. Depomed, Inc., IPR2014-00379
Paper 65: Decision on Petitioner’s Request for Rehearing
Dated: March 17, 2015
Patent 6,340,475
Before: Erica A. Franklin, Grace Karaffa Obermann, and Tina E. Hulse
Written by: Hulse