Aker Biomarine AS and ENZYMOTEC LTD. and ENZYMOTEC USA, INC.,v.Neptune Technologies and Bioressources Inc.

Patent Trial and Appeal Board

Jul 8, 2015

13189714 (P.T.A.B. Jul. 8, 2015)

Trials@uspto.gov Paper 106
Tel: 571-272-7822 Entered: July 8, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
AKER BIOMARINE AS and ENZYMOTEC LTD. and
ENZYMOTEC USA, INC.,
Petitioner,

v.

NEPTUNE TECHNOLOGIES AND BIORESSOURCES INC.,
Patent Owner.
_______________

Case IPR2014-00003
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Patent 8,278,351 B2
____________

Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION
Petitioner’s Request for Rehearing
37 C.F.R. § 42.71

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Case IPR2014-00556 has been joined with this proceeding.
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I. INTRODUCTION
Aker Biomarine AS (“Aker”) and Enzymotec Ltd. and Enzymotec
USA, Inc. (“Enzymotec”) (collectively, “Petitioner”), filed a Request for
Rehearing (Paper 105, “Req. Reh’g” or “Request”) of our Final Decision
(Paper 104, “Final Dec.”).
In rendering the decision to institute, we instituted an inter partes
review as to claims 16, 9, 12, 13, 1929, 32, 35, 36, and 4246 of U.S.
Patent No. 8,278,351 B2 (Ex. 1001; “the ’351 patent”) for the following
grounds of unpatentability:
(i) Claims 1, 36, 9, 1213, 1924, 2629, 32, 3536, and 4246 of
the ’351 patent under 35 U.S.C. § 102 as anticipated by
Beaudoin I (Ex. 1002); and
(ii) Claims 16, 9, 12, 13, 1929, 32, 35, 36, and 4246 of the ’351
patent under 35 U.S.C. § 103 as obvious over the combination
Fricke (Ex. 1006), Bergelson (Ex. 1017), Yasawa (Ex. 1015),
Itano (Ex. 1009), and the WHO Bulletin (Ex. 1018).
Decision to Institute, 28–29 (Paper 22 (“Dec.”)).
We, then, denied the remaining grounds of unpatentability asserted by
Petitioner as redundant to the grounds of unpatentability on which we
already initiated an inter partes review. Id. at 2728. The grounds of
unpatentability that were denied as redundant include:
(i) Claims 1, 36, 9, 12, 13, 1924, 2629, 32, 35, 36, and 4246
under 35 U.S.C. § 102(b) over Beaudoin II (Ex. 1003);
(ii) Claims 1, 36, 9, 12, 13, 1924, 2629, 32, 35, 36, and 4246
under 35 U.S.C. § 102(b) over Maruyama (Ex. 1004);
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(iii) Claims 1, 36, 9, 12, 13, 1924, 2629, 32, 35, 36, and 4246
under 35 U.S.C. § 102(b) over Fujita (Ex. 1005);
(iv) Claims 1, 36, 9, 1924, 2629, 32, and 4246 under 35 U.S.C.
§ 102(b) over Fricke (Ex. 1006);
(v) Claims 1, 1921, 24, and 4244 under 35 U.S.C. § 102(b) over
Rogozhin (Ex. 1008);
(vi) Claims 16, 9, 12, 13, 1929, 32, 35, 36, and 4246 under 35
U.S.C. § 103(a) over the combination of Beaudoin I and Bergelson
(Ex. 1017);
(vii) Claims 16, 9, 12-13, 19–29, 32, 35, 36, and 4246 under 35
U.S.C. § 103(a) over the combination of a Beaudoin I, the Final
Prospectus (Ex. 1011), 2001 Press Release (Ex. 1012), and
Bergelson; and
(viii) Claims 16, 9, 1213, 1929, 32, 3536, and 4246 under 35
U.S.C. § 103(a) over the combination of Fujita, Watanabe (Ex.
1039), Itano (Ex. 1009), and Yasawa (Ex. 1015).
Id.
In our Final Decision, we found that Petitioner had established by a
preponderance of the evidence that claims 14, 6, 9, 12, 13, 1927, 29, 32,
35, 36, and 4246 were unpatentable, but found that Petitioner did not
establish sufficiently that claims 5 and 28 were unpatentable. Final Dec. 36–
37.
In its Request for Rehearing, Petitioner contends that the Board
should reconsider its decision not to institute the following grounds of
unpatentability that were denied as redundant:
(i) Claims 5 and 28 under 35 U.S.C. § 102(b) over Maruyama (Ex.
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1004); and
(ii) Claims 5 and 28 under 35 U.S.C. § 102(b) over Fujita (Ex. 1005).
Reh’g Req. 115.
For the reasons set forth below, Petitioner’s request for rehearing is
denied.
II. ANALYSIS
A request for rehearing must identify specifically all matters the party
believes the Board misapprehended or overlooked, and the place where each
matter was addressed previously in a motion, an opposition, or a reply. 37
C.F.R. § 42.71(d).
In its Request for Rehearing, Petitioner contends that the Board lacks
authority to decline to institute on grounds of unpatentability based, in whole
or in part, on Maruyama and Fujita. Req. Reh’g 1014. Petitioner further
argues that it was an abuse of discretion to decline to institute on grounds of
unpatentability based on Maruyama and Fujita under the principles of
redundancy. Id. at 1415. We disagree.
We begin our analysis by noting that the rules for inter partes reviews
were promulgated to take into account the “effect of any such regulation on
the economy, the integrity of the patent system, the efficient administration
of the Office, and the ability of the Office to timely complete proceedings.”
35 U.S.C. § 316(b). As mandated by 35 U.S.C. § 316(a)(11), 37 C.F.R.
§ 42.100(c) was promulgated to require that the final written determination
in an inter partes review to be issued one year after the date of institution,
except that the review may be extended by not more than six months for
good cause shown. Further, 37 C.F.R. § 42.108(b) provides that “[a]t any
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time prior to institution of inter partes review, the Board may deny some or
all grounds for unpatentability for some or all of the challenged claims.”
This discretion stems directly from 35 U.S.C. § 316(b), which recognizes,
among other things, that inter partes proceedings must be conducted to
ensure the ability of the Office to timely complete the proceedings.
The concept of redundancy is a tool used by the Board in determining
whether to exercise its discretion to deny some or all grounds set forth in the
Petition. The proper focus of a redundancy designation is on whether
Petitioner articulates a meaningful distinction in terms of relative strengths
and weaknesses with respect to the application of the prior art disclosures to
one or more claim limitations. Liberty Mutual Ins. Co. v. Progressive
Casualty Inc. Co., CBM2012-00003 (Paper No. 7), at *2 (PTAB, Oct. 25,
2012).
In its Request for Rehearing, Petitioner argues why the grounds of
unpatentability based on Maruyama or Fujita are stronger than the grounds
of unpatentability on which we instituted. Req. Reh’g, 78. This analysis,
however, is based on a comparison of the claim construction for the term
“about” set forth in our Decision of Institution and Final Decision. Id. The
analysis is not based upon the claim construction for the term “about” set
forth in the Petition and, more importantly, the analysis is not part of the
Petition.
Petitioner, in its Petition, did not explain adequately the relative
strengths or weaknesses between the applied prior art references. If
Petitioner believed that any other grounds set forth in the Petition had certain
weaknesses or strengths, as compared to grounds of unpatentability based on
Maruyama or Fujita, for example based on alternative claim constructions
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that Patent Owner might have raised, it was incumbent upon Petitioner to
identify those strengths or weaknesses in its Petition. Doing so would have
allowed us to recognize and weigh such factors in rendering a decision as to
whether to institute review based on the different asserted grounds. Simply
proposing different grounds of unpatentability directed to the same subset of
claims does not distinguish meaningfully the applied prior art references.
Based on the analysis set forth in the Petition, we determined certain
grounds to be redundant, as the relative strengths and weaknesses of the
different stated grounds were not readily apparent from the analysis set forth
in the Petition. It is a matter of discretion to not proceed with any redundant
ground and we exercised that discretion without abuse of the process.
Petitioner further request that we exercise our authority 37 C.F.R.
§ 42.5 and reverse our decision not to institute as to Maruyama and Fujita.
Req. Reh’g, 910. In making this request, Petitioner fails to appreciate that
we are charged with securing “the just, speedy, and inexpensive resolution
of every proceeding.” 37 C.F.R. § 42.1(b). Reversing our decision not to
institute as to Maruyama and Fujita after issuance of our Final Decision
would defeat the purpose of that mandate.
For the forgoing reasons, Petitioner has not shown that the Board
misapprehended or overlooked any matter in denying the redundant grounds
of unpatentability based on either Maruyama or Fujita.
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s request for rehearing is denied.

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PETITIONER:

Amanda Hollis
amanda.hollis@kirkland.com

PATENT OWNER:

Dean Farmer
dfarmer@cooley.com