The Patent Trial and Appeal Board (PTAB) denied a patent owner’s request for rehearing of the PTAB’s decision to institute inter partes review (IPR) when there was ambiguity in one of the inventors’ declarations about whether and to what extent non-author inventors contributed to the relevant portion of an asserted reference. Watson Laboratories, Inc. v. United Therapeutics, Corp., Case No. IPR2017-01621 (PTAB, Mar. 26, 2018) (Paper 33) (Cotta, APJ).

Watson Laboratories filed a petition for request IPR challenging certain claims of a patent owned by United Therapeutics (UTC). Following UTC’s preliminary response, the PTAB entered a decision granting institution. UTC filed a request for rehearing seeking reconsideration of the institution decision. 

UTC argued that an asserted journal article was not prior art because it was not the work of another. In the institution decision, the PTAB concluded that evidence provided by Watson was sufficient to resolve factual disputes involving the availability of the journal article as a prior art printed publication for the purposes of institution. The PTAB maintained its conclusion while denying UTC’s request for rehearing and further elaborated its finding that the declarations provided by UTC left some ambiguity as to the contribution of authors who were not co-inventors to the relevant portion of the asserted journal article and the contribution of several named inventors who were not co-authors of the asserted journal article. The PTAB framed the issue as follows: “whether a reference is the work of ‘another’ is not limited to the contribution of the non-inventor co-authors. Rather, the inquiry is whether the inventive entities are the same for the relevant portion of [the journal reference] and for the challenged claims.”

The PTAB distinguished its findings here from its 2017 ruling in Varian Med Systs. v. Wm. Beaumont Hosp., where it held that “the omission of a named inventor from co-authorship has no significance for whether the publication is the work of ‘others,’” because the “by another” issue is to be determined based on the facts of the case at hand, and the facts in Varian were different because the inventor’s declaration in Varian was unambiguous.

The PTAB further noted that in determining whether to institute IPR, the PTAB considers whether a petitioner has met the burden of establishing a “reasonable likelihood that at least one of the claims challenged in the petition is unpatentable” in the light most favorable to the petitioner, and therefore the issue of contribution of the non-inventor co-authors is a genuine issue of material fact that must be viewed in the light most favorable to the petitioner, and may be resolved after Watson has the opportunity to cross-examine any of UTC’s declarants. 

Practice Note: When confronting the issue of whether an asserted printed publication is the work of another, practitioners representing patent owners in America Invents Act proceedings should endeavor to unambiguously address and resolve all factual issues regarding whether (1) the portion of the asserted publication relied on by the petitioner and (2) the subject matter of the challenged claims both represent the contribution of the named inventors—and only the named inventors.