Board IPR findings of obviousness based on inherency affirmed

Cornell Research Foundation, Inc. v. Katherine K. Vidal (USPTO)

Docket No. 2020-2334-40 (IPR2019-00578-82) (https://cafc.uscourts.gov/opinions-orders/20-2334.OPINION.5-24-2022_1955796.pdf) (Non-Precedential)

PROST, REYNA, TARANTO

May 24, 2022

Brief Summary:   Board IPR findings of obviousness based on inherency affirmed.

Summary: Cornell appealed USPTO Board final written decisions (FWDs) finding the challenged claims of US 8,993,300 (“representative in this appeal”) directed to methods for producing E. coli phytases A and B in fungi including Saccharomyces cerevisiae and Pichia pastoris.  The challenged claims include providing and expressing a polynucleotide encoding the E. coli phytase in fungal cells (claim 1) and dependent claims including “thermostability limitations” (e.g., optimum activity at 57-65 degrees C, 40% activity for 15 minutes at 80 degrees C, or 60% activity for 15 minutes at 60 degrees C).  The six IPR challenges were filed by Associated British Foods (ABF) including “two varieties of prior-art combinations in its petitions—those involving Kretz and those not involving Kretz” (two different combinations of several references), and “the parties agree that all six Board decisions ‘stand and fall’ with the Board’s non-Kretz obviousness analysis for the ’300 patent.”  The Board found Cornell did not antedate Kretz and that it anticipated certain claims and rendered others obvious.  ABF’s obviousness argument was “that the thermostability claims of the ’300 patent would have been obvious for two independent reasons: (1) they were inherent properties of the Dassa/Greiner combinations, and (2) they were disclosed by Olsen” and the Board agreed with the first (motivation to combine and reasonable expectation of success, “the thermostability properties of the phytases produced by the claimed heterologous method are inherent”, and Cornell did not antedate Kretz).  Cornell did not argue the limitations are disclosed by the Dassa/Greiner combinations but disputed the motivation to combine the references with a reasonable expectation of success.  The FC panel reviewed the Board’s decision for substantial evidence (In re Mouttet, FC 2012; Par Pharm., FC 2014).  The Board credited ABF’s expert testimony that P. pastoris was known to produce heterologous proteins at high yields (i.e., the motivation to try) which the FC panel found supported by substantial evidence (KSR, US 2007 (“any need or problem…can provide a reason for combining” references)).  The FC panel found Cornell’s arguments not to “outweigh[]” the evidence the Board relied on (In re Young, FC 1991).  Cornell also argued the prior art suggested using a bacterial host would be “more advantageous” but the FC panel “correctly noted, ‘the law ‘does not require that the motivation be the best option, only that it be a suitable option” (quoting Par).  Cornell also challenged the Board’s inherency findings (Par) derived from expert testimony, the ‘300 patent, and its prosecution history.  Cornell did not argue the Dassa/Greiner combination presented different conditions from those of the ‘300 patent, and its argument that ABF’s reliance on Kretz was regarding a different phytase enzyme.  The FC panel therefore affirmed the Board’s decision without reaching Cornell’s argument that its work antedated Kretz.

This entry was posted in Anticipation (35 USC 102), Inherency, Inter Parties Review (IPR), IPR, Obviousness. Bookmark the permalink.

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