Takeaway: A claimed compound may not be obvious to try where the prior art discloses several classes that encompass a significant number of compounds.

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 challenged claim. The ’863 patent “relates to a method of using hop acids for increasing food and energy uptake from feed by livestock.”

Patent Owner first argued that the Board should exercise its discretion and deny the Petition under 35 U.S.C. § 325(d) because the newly-asserted prior art is cumulative of prior art considered during the original prosecution of the ’863 patent. However, the Board declined.

Turning to claim construction, the Board stated that claims in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent. Petitioner proposed constructions for several limitations, and Patent Owner argued that the claim terms should be given their plain and ordinary meanings. The Board adopted Petitioner’s proposed constructions.

The Board then addressed the asserted grounds of unpatentability. First, Petitioner argued that all challenged claims were obvious over Krishna, but the Board found that Petitioner had not established a reasonable likelihood of prevailing on this ground. The Board agreed with Patent Owner that Krishna failed to teach “hop acids, and not other components of the spent hops preparations, as causing methane reduction.” The Board also agreed with Patent Owner that the use of hop acids for methane reduction was not obvious to try because Krishna identifies four classes of agents “encompassing a significant number of compounds,” instead of identifying four agents as argued by Petitioner. The Board held that Petitioner failed to establish “why an ordinary artisan, knowing the teachings of Krishna, would have considered it obvious to administer an effective amount of hop acid capable of decreasing the production of unoxidized carbon sources and unoxidized carbon waste, as recited in claim 1.” The Board found that Petitioner had not established obviousness of claims 2-8 for the same reasons.

With respect to obviousness over Krishna, King, Johnson, and Maye, Petitioner argued that, “to the extent Krishna by itself is insufficient to guide one of ordinary skill in the art regarding an effective amount of hop acids, King, Johnson, and Maye provide additional teachings to that end.” However, because the Board was not persuaded “that Krishna suggests hop acids, and not other components of the spent hops preparations, as causing the claimed effects,” the Board was also not persuaded that “a skilled artisan would have had a reason to combine the teachings of Krishna with those of King, Johnson, and Maye.”

The Board then addressed the asserted obviousness over Siefker, 21 C.F.R. § 582, Bergen, Beuchat, Maye, and Ting. The Board noted that Petitioner relied upon large portions of its expert declaration to support otherwise conclusory statements, citing to nearly 20 pages in one instance and 34 pages in another instance. This practice violates the rule against incorporation by reference. 37 C.F.R. § 42.6(a)(3). Even considering the incorporated material, the Board was nevertheless not persuaded that a skilled artisan “would have been motivated to consider hop acids to replace ionophore antibiotics.” In addition, noting that Petitioner cited extensively to the specification of the ’863 patent, the Board stated that “[t]o the extent Petitioner uses the ’863 patent Specification, rather than the cited references, as a roadmap to evaluate the obviousness of the challenged claims, Petitioner relies on improper hindsight.” Therefore, the Board concluded that Petitioner failed to establish a reasonable likelihood of prevailing.

S.S. Steiner, Inc. v. John I. Haas, Inc., IPR2014-01490
Paper 7: Decision Denying Institution of Inter Partes Review
Dated: March 16, 2015
Patent: 8,197,863
Before: Francisco C. Prats, Jacqueline Wright Bonilla, and Zhenyu Yang
Written by: Yang
Related Proceedings: IPR2014-01491