ANTECIP BIOVENTURES II LLC

Patent Trials and Appeals Board

Nov 10, 2020

PGR2019-00003 (P.T.A.B. Nov. 10, 2020)

Trials@uspto.gov Paper 25
Tel: 571-272-7822 Date: November 10, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
GRÜNENTHAL GMBH,
Petitioner,

v.

ANTECIP BIOVENTURES II LLC,
Patent Owner.
____________

PGR2019-00003
Patent 9,867,839 B2
____________

Before GRACE KARAFFA OBERMANN, SHERIDAN K. SNEDDEN,
and CHRISTOPHER M. KAISER, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION
Denying Patent Owner’s Request on Rehearing of Final Written Decision
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
Patent Owner filed a Request for Rehearing (Paper 23, “Req. Reh’g”)
seeking review of the Board’s Final Written Decision (Paper 22, “Dec.”), in
which we held unpatentable claims 1–14 of U.S. Patent No. 9,867,839 B2
(Ex. 1001, “the ’839 patent”). We also refer to the Petition (Paper 2, “Pet.”),
Patent Owner’s Response (Paper 9, “PO Resp.”), Petitioner’s Reply (Paper
14, “Reply”), and Patent Owner’s Sur-Reply (Paper 16, “Sur-Reply”).
For the reasons set forth below, Patent Owner’s request for rehearing
is denied.
II. STANDARD OF REVIEW
“The burden of showing that a decision should be modified lies with
the party challenging the decision.” Office Patent Trial Practice Guide, 77
Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the
dissatisfied party must (1) “specifically identify all matters the party believes
the Board misapprehended or overlooked” and (2) identify the place “where
each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent
Trial Practice Guide, 77 Fed. Reg. at 48,768.
III. DISCUSSION
A. Background of the Dispute
In our Final Written Decision, we determined that the information
pertaining to the publication on the face of each of Verrena 2012 (Ex. 1005),
Muratore (Ex. 1006), Gatti 2009 (Ex. 1007), Dowd (Ex. 1009), Rossini (Ex.
1013), Varenna Protocol (Ex. 1014), deCastro (Ex. 1015), and Zaspel (Ex.
1016) (collectively, “Petitioner’s References”) was sufficient to establish
that each document qualifies as a printed publication. Dec. 12–18. In doing

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so, we considered the testimony of Dr. Poree and, additionally, the
information provided by Patent Owner. Id.
Patent Owner requests modification of our determination regarding
the publication status of Petitioner’s References and, consequently,
modification of the Final Written Decision, on two grounds. Req. Reh’g 1–
2. First, Patent Owner contends that our determination that each of
Petitioner’s References qualifies as a prior art printed publication is based on
a misapprehension of the law. Id. at 1. Second, Patent Owner contends that
we overlooked Patent Owner’s arguments set forth in the briefing. Id. at 1–2
(citing PO Resp., 3–9 and Sur-Reply, 4–9). We address in turn each of those
asserted grounds for modification.
i. Whether we misapprehended or overlooked evidence of public
accessibility
Patent Owner contends that the panel “did not look for evidence of
public accessibility, . . . . which involves examining the evidence for proof
that each non-patent reference was ‘disseminated or otherwise made
available to the extent that persons interested and ordinarily skilled in the
subject matter or art, exercising reasonable diligence, can locate it.’” Req.
Reh’g 3 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908
F.3d 765, 773 (Fed. Cir. 2018)). We do not agree. On the contrary, we
addressed with particularity the substantial evidence tending to show that
each of Petitioner’s References “was disseminated or otherwise made
available to the extent that persons interested and ordinarily skilled in the
subject matter or art, exercising reasonable diligence, can locate it.”
Dec. 12.

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Specifically, in our Decision, we properly credited indicia on the face
of Petitioner’s References, such as printed dates and citation information,
which are “part of the totality of the evidence” bearing on the issue of public
accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039,
Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Using Varenna
2012 as an example, those indicia included details of the copyright notice,
indicating publication of Varenna 2012 “by Oxford University Press on
behalf of the British Society for Rheumatology” in “2012;” and also
additional legends, including the statement “Advance Access publication 30
November 2012,” and a conventional edition identifier from the journal
Rheumatology. Dec. 15–16 (quoting Ex. 1005). In the same manner, the
totality of evidence supports our finding that each of Petitioner’s References
was publicly available prior to the critical date of the invention. Id. at 15–
18.
Patent Owner advanced no evidence tending to cast doubt on that
publication date. PO Resp., 3–9 and Sur-Reply, 4–9. Although the burden
of proof never shifted to Patent Owner on the issue of public availability,
where Patent Owner declined to advance counter evidence on point, we did
not err by crediting the indicia, which appear on the face of Petitioner’s
References, as part of the totality of evidence bearing on the issue.
Furthermore, we did not err in finding Patent Owner’s arguments,
unsupported by evidence, unpersuasive in view of the facts and
circumstances supporting Petitioner’s position.1

1 As noted in the Final Written Decision, Patent Owner did not challenge the
admissibility of any evidence or otherwise identify any reason to exclude

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We have considered Patent Owner’s remaining positions set forth in
the Request and are not persuaded to change the conclusions set forth in the
Final Written Decision. Patent Owner does not direct us to any evidence
that we may have misapprehended or overlooked when reaching our
conclusions. Rather, Patent Owner continues to advocate its position and
expresses disagreement with the conclusions made in the Final Written
Decision, but does not persuade us that we misapprehended or overlooked
any matter.
ii. Whether we failed to properly consider Patent Owner’s arguments
and authority
Patent Owner alleges that the Board erred by failing to “substantively
address” Patent Owner’s arguments set forth in the Patent Owner Response
and Sur-Reply. Req. Reh’g. 9–11 (citing PO Resp., 3–9 and Sur-Reply, 4–
9). Specifically, Patent Owner contends that
[T]he Board did not critically analyze the indicia to explain how
they prove public accessibility under the law. Taking Varenna
2012 as an example, the Board listed several items of indicia, but
did explain how they combine to show a person of ordinary skill
in the art could have located Varenna 2012, or that it was actually
disseminated, i.e., that it was publicized or placed in front of the
interested public without restriction on redistribution or
expectation of confidentiality. SRI Int’l, Inc. v. Internet Sec. Sys.,
Inc., 511 F.3d 1186, 1197 (Fed. Cir. 2008), GoPro, Inc. v.
Contour IP Holding LLC, 908 F.3d 690, 694 (Fed. Cir. 2018).
Id. at 10–11.

any of Petitioner’s References. Dec. 15.

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We are not persuaded by Patent Owner’s contentions that we
overlooked or failed to address any of Patent Owner’s arguments. We
understand Patent Owner’s position to be that indicia of publication on the
face of Petitioner’s References are insufficient to establish that any of
Petitioner’s References are prior art printed publications. Req. Reh’g. 9–11;
PO Resp., 3–9; Sur-Reply, 4–9. However, we considered that position and
did not agree under the circumstances presented before in this case. Dec.
12–18.
In our Decision, we resolved a factual dispute between the parties
regarding whether any of Petitioner’s References were publicly available.
Id. In doing so, we considered the totality of evidence related to the parties’
positions related to that issue. Id. We weighed evidence supporting
Petitioner’s position that Petitioner’s References would have been publicly
available—largely, the indicia of publication on the face of each document.
We also weighed Patent Owner’s arguments and lack of evidence supporting
Patent Owner’s position that Petitioner’s References are not printed
publications. In this regard, we note that Patent Owner provided no
evidence to counter the indicia of publication on the face of Petitioner’s
References. PO Resp., 3–9; Sur-Reply, 4–9. Under those circumstances, we
determined that the facts and circumstances favor a determination that the
indicia of publication on Petitioner’s References are sufficient to establish
that Petitioner’s References qualify as printed publications for the reasons
set forth in our Final Written Decision. Id. at 16.
Furthermore, our findings regarding Petitioner’s References align with
the guidance provided in Hulu, which sets forth a case-by-case approach in

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which a copyright notice may contribute to the totality of evidence weighed
that is relevant to public availability. See Hulu, Paper 29 at 9–11, 17–19
(discussing the case-by-case analysis turning on particular circumstances,
including the nature of the reference (distinguishing a thesis from a journal
article) and the indicia of public accessibility appearing on the face of the
reference). Significantly, the facts here include the “conventional markers
of publication, such as a copyright date, edition identifier, [and] publication
by a commercial publisher” that the Hulu panel identified as relevant. Id. at
17; see also Telefonaktiebolaget LM Ericsson v. TCL Corp., 941 F.3d 1341,
1344 & 1347 (Fed. Cir. 2019) (holding that “the date on the face of the
journal” was part of the substantial evidence supporting PTAB’s finding that
a journal article was prior art).
Accordingly, for the reasons discussed above, we conclude that we
did not overlook or misapprehend any matter in concluding that the totality
of circumstances support our finding that Petitioner established by a
preponderance of evidence that Petitioner’s References were publicly
available prior to the critical date of the invention.
III. CONCLUSION
For the above reasons, we deny Patent Owner’s Request for
Rehearing of the Board’s Final Written Decision in this proceeding.
IV. ORDER
It is
ORDERED that Patent Owner’s Request for Rehearing of the Final
Written Decision is denied.

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FOR PETITIONER:

Daniel Minion
Bruce Haas
VENABLE LLP
dminion@venable.com
bchaas@venable.com

FOR PATENT OWNER:

Brett Johnson
Parrish Freeman
MASCHOFF BRENNAN
bjohnson@mabr.com
pfreeman@mabr.com

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