Kalisz et al.v.Bayer et al.

Patent Trial and Appeal BoardMar 26, 2018

12797175 (P.T.A.B. Mar. 26, 2018)

BoxInterferences@uspto.gov Filed: 26 March 2018 Tel: 571-272-7822 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ecovative Design LLC, Junior Party (Application 14/082,601, Inventors: Eben Bayer, Gavin McIntyre, and Burt L. Swersaey), v. Ford Global Technologies, LLC, Senior Party (Patent 8,227,224 Inventors: Raymond Edward Kalisz and Charles Alan Rocco). Patent Interference No. 106,069 (DK) JUDGMENT 37 C.F.R. § 41.127(a) Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH KATZ, Administrative Patent Judges. KATZ, Administrative Patent Judge. As explained in the Decision on Motions, Junior Party Ecovative Design 1 LLC (“Ecovative”) failed to present persuasive argument supported by evidence 2 that prior application 12/001,556 is a constructive reduction to practice of an 3 Interference 106,069 2 embodiment within the scope of Count 1. (See Decision on Motions, Paper 64.) 1 Ecovative does not assert a reduction to practice or conception earlier than the 2 filing date of the application that became patent 8,227,224 of Senior Party Ford 3 Global Technologies, LLC (“Ford”). (See Ecovative Priority Statement, Paper 30.) 4 Thus, Ecovative has failed to prove priority over Ford. 5 Accordingly, it is ORDERED that judgment is entered against Ecovative 6 under 35 U.S.C. § 135(a)1 as to Count 1; 7 It is FURTHER ORDERED that claims 1–13 of Ecovative’s involved 8 application 14/082,601 are FINALLY REFUSED; 9 FURTHER ORDERED that the parties are directed to 35 USC 135(c) and to 10 Bd. R. 205 regarding the filing of settlement agreements; 11 FURTHER ORDERED that a copy of this judgment shall be entered into the 12 administrative record of Ecovative’s application 14/082,601 and Ford’s patent 13 8,272,224; and 14 FURTHER ORDERED that a party seeking judicial review timely serve 15 notice on the Director of the United States Patent and Trademark Office; 37 C.F.R. 16 §§ 90.1 and 104.2. See also 37 C.F.R. § 41.8(b). Attention is directed to Biogen 17 Idec MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 654–57 18 (Fed. Cir. 2015) (determining that pre-AIA § 146 review was eliminated for 19 interference proceedings declared after September 15, 2012). 20 1 Patent interferences continue under the relevant statutes in effect on 15 March 2013. Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011). Interference 106,069 3 cc (via e-mail): Attorney for Junior Party Ecovative: Francis C. Hand, Esq. Raymond J. Lillie, Esq. CARELLA, BYRNE, et al. fhand@carellabyrne.com rlillie@carellabyrne.com Attorney for Senior Party Ford Global: E. Anthony Figg, Esq. R. Danny Huntington, Esq. Seth E. Cockrun, Ph.D., Esq. ROTHWELL, FIGG, ERNST & MANBECK, P.C. efigg@rfem.com dhuntington@rfem.com scockrum@rfem.com BoxInterferences@uspto.gov Filed: 26 March 2018 Tel: 571-272-7822 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ecovative Design LLC, Junior Party (Application 14/082,601, Inventors: Eben Bayer, Gavin McIntyre, and Burt L. Swersaey), v. Ford Global Technologies, LLC, Senior Party (Patent 8,227,224 Inventors: Raymond Edward Kalisz and Charles Alan Rocco). Patent Interference No. 106,069 (DK) DECISION ON MOTIONS 37 C.F.R. § 41.125(a) Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH KATZ, Administrative Patent Judges. KATZ, Administrative Patent Judge. Interference 106,069 2 Introduction 1 This interference is before us to decide the parties’ preliminary motions. 2 Ecovative Design LLC (“Ecovative”) is Junior Party, based on the filing date (18 3 November 2013) of its involved application 14/082,601 (“the ’601 application”). 4 Ford Global Technologies, LLC (“Ford”) is Senior Party based on the filing date (9 5 June 2010) of the application that became its involved patent 8,227,224 (“the ’224 6 patent”). 7 Both parties’ inventions relate to molded parts made of cultured fungi as an 8 alternative to petroleum-based plastics and foams. (’601 appl., Exh. 2001, at 1–3; 9 ’224 patent, Exh. 1001, at 1:21–35.) Fungi grow quickly, have excellent 10 bioefficiency, and have a strong, hard cell wall. (See ’601 appl., Exh. 2001, at 2; 11 ’224 patent, Exh. 1001, at 3:41–48.) The parties’ specifications explain that fungi 12 grow into “mycelium,” which are made up of masses of filamentous, tubular, 13 thread-like substances called hyphae. The hyphae grow towards a food source, 14 expanding to fill a volume. (’601 appl., Exh. 2001, at 6; ’224 patent, Exh. 1001, at 15 4:8–20.) 16 In the parties’ inventions, fungi are cultured with a liquid aggregate or 17 growth medium and grown in a mold to produce an object with the shape of the 18 mold. (’601 appl., Exh. 2001, at 6–7; ’224 patent, Exh. 1001, at 1:28–35.) The 19 parties’ claims specifically recite methods of making a molded part from a fungal 20 inoculum, wherein the molded part includes a device partly coupled to the fungal 21 mycelium and partly exposed outside of the mold cavity used to form the molded 22 part. (See Ford Clean Copy of Claims, Paper 7, and Appendix to Appeal Brief 23 filed 27 August 2016 in the ’601 appl., Exh. 20091.) 24 1 Ecovative did not file a clean copy of its claims as required. See 37 C.F.R. § 41.110(a). We cite to the claims appendix Ecovative filed with its involved ’601 Interference 106,069 3 Count 1 describes the interfering subject matter and recites: 1 A method of making a molded part, comprising: 2 inserting a fungal inoculum and a mixture comprising a liquid 3 and a nutrient for the fungal inoculum into a mold cavity; 4 inserting a portion of a mechanical device into the mold cavity 5 such that a portion of the mechanical device is exposed by not being 6 inserted in the mold cavity; 7 growing the fungal inoculum into live mycelium that operably 8 couples with the portion of the mechanical device inserted in the mold 9 cavity, and such that the mycelium does not couple to exposed portion 10 of the mechanical device; and 11 heating the mycelium to terminate further growth and develop a 12 molded part made of mycelium and the mechanical device. 13 14 (Order, Paper 14, at 2.) 15 Two motions are before us. Ecovative filed a motion seeking to be accorded 16 benefit of the filing dates of its earlier application 12/001,556 (“the ’556 17 application”). (See Ecovative Substantive Motion 1 (“Ecovative Motion 1”), Paper 18 20). Ford filed a motion seeking judgment that Ecovative’s involved claims are 19 unpatentable under 35 U.S.C. § 102(b). (See Ford Global Technologies, LLC 20 Substantive Motion 2 (“Ford Motion 2”), Paper 32.) We consider these motions in 21 the order that provides for the most just, speedy, and efficient resolution of the 22 issues of this proceeding. See 37 C.F.R. 41.125(a). 23 24 Ecovative Motion 1 25 Ecovative states that its Motion 1 seeks the benefit of the filing date of its 26 parent ’556 application “for at least each of claims 1 and 3 of its application.” (See 27 Evocative Motion 1, Paper 20, at 1:2–5.) Ecovative was authorized to file a 28 motion seeking benefit of the filing date of the ’556 application as a constructive 29 application during prosecution (Exh. 2009). Interference 106,069 4 reduction to practice of the Count. See Order – Authorizing Motions and 1 Redeclaration, Paper 14, at 2 (“During the conference call, Ecovative’s counsel 2 clarified that by priority he meant an earlier constructive reduction to practice 3 based upon the filing dates of Ecovative’s parent applications. Ecovative was 4 authorized to file a motion to establish the benefit of the filing dates of its parent 5 applications.”). Under the rules governing interferences, “[a]ccord benefit means 6 Board recognition that a patent application provides a proper constructive 7 reduction to practice under 35 U.S.C. 102(g)(1)” where a proper constructive 8 reduction to practice is a described and enabled anticipation of the subject matter 9 of the Count. 37 C.F.R. § 41.201. Thus, to grant a motion for benefit, we must be 10 persuaded that Ecovative’s ’556 patent application provides a constructive 11 reduction to practice of Count 1, not any particular claim. 12 Ecovative asserts that “[a]n interference count is accorded the benefit of the 13 filing date of an earlier application under 35 U.S.C. 120 if subject matter within the 14 count could have been claimed in the earlier application.” (Ecovative Motion 1, 15 Paper 20, at 1:20–22.) Although there are aspects of patentability considered when 16 determining whether to accord benefit of a filing date to a party, the assignment of 17 benefit does not indicate what a party could have claimed. Instead, we look to 18 whether the disclosure of the ’556 application provides a described and enabled 19 anticipation of the Count and whether it was continuously disclosed through each 20 subsequent application.2 See 37 C.F.R. § 41.201 (“Constructive reduction to 21 2 Ecovative accuses Ford of using its opposition to Ecovative Motion 1 as a “subterfuge” for filing a motion for unpatentability of Ecovative’s claims under 35 U.S.C. § 112. (See Ecovative Reply 1, Paper 60, at 1:19–23 and 7:8–8:1.) Because the issue presented by Ecovative Motion 1 is whether the ’556 application, not Ecovative’s involved ’601 application, provides a described and enabled anticipation of Count 1, we make no determination about the disclosure of Ecovative’s involved application in deciding Ecovative Motion 1. Similarly, Interference 106,069 5 practice means a described and enabled anticipation under 35 U.S.C. 102(g)(1), in 1 a patent application of the subject matter of a count. Earliest constructive 2 reduction to practice means the first constructive reduction to practice that has 3 been continuously disclosed through a chain of patent applications including in the 4 involved application or patent. For the chain to be continuous, each subsequent 5 application must comply with the requirements of 35 U.S.C. 119-121, 365, or 6 386.”). 7 Ecovative argues that it is deserving of the benefit of the filing date of the 8 ’556 application because during prosecution the examiner withdrew rejections 9 based on the denial of the benefit of that application as to Ecovative’s claims. (See 10 Ecovative Motion 1, Paper 20, at 4:1–6:16.) Specifically, Ecovative’s involved 11 claims were rejected over several references, including Ford’s involved patent 12 8,227,224. (See, e.g., Final Office Action in application 14/082,601, issued 18 13 April 2016, Exh. 2006, at 18–22.) The examiner initially determined that these 14 references are prior art under 35 U.S.C. § 102(b) because she did not find support 15 in Ecovative’s earlier applications. The examiner also objected to additions to 16 Ecovative’s involved application as support for its current claims, determining that 17 the additions were new matter. (See id.) After Ecovative filed an Appeal Brief 18 challenging the examiner’s decision, the examiner withdrew the rejections, stating 19 that “[t]he claims appear to be in condition for allowance,” and referring 20 Ecovative’s involved application to the Board for consideration of an interference. 21 (See Communication in application 14/082,601 issued 19 December 2016, Exh. 22 Ecovative cites to the amendment it filed during prosecution of its involved ’601 application. (See Ecovative Motion 1, Paper 20, at 4:12–22.) Because Ecovative does not show that a similar amendment was made to the specification of the ’556 application, the amendment to the involved application is not indicative of whether the ’556 application provides a described and enabled anticipation of Count 1. Interference 106,069 6 2005.) 1 Ecovative argues there is a presumption that claims filed in an application 2 have adequate written description, citing In re Wertheim, 541 F.2d 257, 263 3 (CCPA 1976). The issue of Ecovative’s Motion 1, though, is not written 4 description support for its claims, but whether Ecovative should be accorded 5 benefit of the filing date of the ’556 application as a constructive reduction to 6 practice of the Count. (See Order – Authorizing Motions and Redeclaration, Paper 7 14, at 2.) Because this interference was declared without according the benefit of 8 any earlier filing date to Ecovative (see Declaration, Paper 1, at 4:6–12), there is a 9 presumption that Ecovative’s earlier filed applications are not a constructive 10 reduction to practice of the Count in this proceeding. (See Bilstad v. Wakalopulos, 11 386 F.3d 1116, 1121 (Fed. Cir. 2004) (“The declaration of interference is an 12 interlocutory order that is presumed to be correct.”).) Accordingly, Ecovative 13 bears the burden in this proceeding of proving it is entitled to benefit by presenting 14 persuasive argument and supporting evidence. See 37 C.F.R. §§ 41.121(b) and 15 41.208(b). 16 Ecovative fails meet this burden because it fails to present substantive 17 argument or supporting evidence in its Motion 1. Rather, Ecovative argues that 18 “[f]or the reasons given in the Appeal Brief [Exhibit 2008] and the Office holding 19 set forth in the Communication dated 12/19/2016 [Exhibit 2005] . . .” application 20 ’556 supports its involved claims 1 and 3.3 (Ecovative Motion 1, Paper 20, at 6:5–21 16.) Acknowledging that the communication from the examiner dated 19 22 December 2016 (Exh. 2005) is not binding, Ecovative asserts that it is “strong 23 evidence as to Ecovative’s right of entitlement.” (Ecovative Reply 1, Paper 60, at 24 3 Ecovative explains that it understands Count 1 to be directed to dependent claim 3 of its involved ’601 application. (See Ecovative Motion 1, paper 20, at 3:14–16.) Interference 106,069 7 7:6–7.) Given the presumption created by the Declaration of this interference on 1 behalf of the Director (see 37 C.F.R. § 41.203(b)), we are not persuaded that 2 submission of an Appeal Brief or ex parte determinations are sufficient evidence to 3 show that the benefit of priority should be accorded to Ecovative as to Count 1. 4 As an initial matter, Ecovative did not present the arguments it asserted in its 5 Appeal Brief in this proceeding. Rather, the brief was incorporated by reference in 6 Ecovative’s motion. (See Ecovative Motion 1, Paper 20, at 5:1–4.) Such 7 incorporations are prohibited by the Standing Order. (See Standing Order, Paper 2, 8 ¶ 106.2 (“Incorporation by reference and combined papers are prohibited to reduce 9 the chance risk of overlooking an argument and to improve the efficiency of 10 decision making. Incorporation of arguments by reference amounts to a self-help 11 increase in the length of the brief and a pointless imposition on the Board's time. 12 Each motion, opposition, and reply must make all arguments accessible to readers, 13 rather than ask them to play archeologist with the record. DeSilva v. DiLeonardi, 14 181 F.3d 865, 866-67 (7th Cir 1999).”) Because Ecovative failed to present 15 substantive argument in its motion to support its position, Ecovative has failed to 16 meet its burden. 17 Even if we were to consider the arguments presented in Ecovative’s Appeal 18 Brief, we would not be persuaded. To be a constructive reduction to practice, the 19 ’556 application must describe and enable a method of making a molded part with 20 a mechanical device that has a portion “exposed by not being inserted in the mold 21 cavity” and not coupled to the mycelium. (See Order, Paper 14, at 2 (reciting 22 Count 1).) 23 In its Appeal Brief, Ecovative asserted that Figure 16 of the ’556 application 24 supports the limitations of its claim 1. (Appeal Brief filed 27 August 2016 (“App. 25 Br.”), Exh. 2008, at 9–16.) Figure 16 is reproduced below. 26 Interference 106,069 8 1 (’556 appl., Exh. 2003 at 62.) Figure 16 depicts a section of a wall board, having a 2 conduit 26, an electrical outlet 27, and wires 28. (Id., at 7 and 38.) According to 3 Ecovative, the conduit, electrical outlet, and wires of Figure 16 each have an 4 exposed portion that is not bonded with the mycelium of the panel. (App. Br. 5 Exh. 2008, at 9–10.) 6 Ecovative reproduced several portions of the ’556 application in its Appeal 7 Brief, but added only the conclusory statement that “in view of the above 8 disclosures, Application No. 12/001,556 supports the method of claim 1 . . . .” 9 (App. Br., Exh. 2008, at 10:9–13:2, citing ’556 appl., Exh. 2003, at 4:1–8; 4:12–10 14; 9:10–11; 21:4–74; 31:17–23; 38:4–16; and claim 20.) Without more 11 explanation and evidentiary support, the arguments in Ecovative’s Appeal Brief 12 would not be sufficient to persuade us Ecovative is entitled to the relief sought in 13 its Motion 1. 14 For example, despite reproducing the selected portions of the ’556 15 application, Ecovative fails to present evidence of how one of ordinary skill in the 16 4 Ecovative cites to page 19, lines 4–7 of the ’556 application (Exh. 2003) on page 11 of its Appeal Brief (Exh. 2008), but the quoted portion appears on page 21, lines 4–7 of the ’556 application. Interference 106,069 9 art would have understood Figure 16 within the context of the rest of the ’556 1 application. In contrast, Ford argues that because the ’556 application states that 2 “Fig. 16 shows a composite panel, produced in accordance with the production 3 processes described in Examples 1, 2, & 3, with a static embodiment and 4 composition similar to that described in Example 4,” one of ordinary skill in the art 5 would have looked to the production process described in those examples to 6 understand Figure 16. (See Ford Opp. 1, Paper 53, at 8:24–10:5, citing ’556 appl., 7 Exh. 2003, at 38:4–6.) 8 Ford argues that Examples 1–4 of the ’556 application provide for an 9 engineered substrate that is produced entirely within an enclosure. (See Ford Opp. 10 1, Paper 53, at 9:17–10:5, citing Second Declaration of Tim Osswald, Ph.D. 11 (“Second Osswald Decl.”), Exh. 1018, at ¶¶ 12–14.) In support, Examples 1–3 12 state that the fungal strain should be grown “within an [or the] enclosure.” (’556 13 appl., Exh. 2003, at 12:21, 16:10–11, 18:5–6; see Second Osswald Decl., Exh. 14 1018, at ¶ 14.) Similarly, Example 4 states that “Each rectangular enclosure fully 15 contained the substrate and inoculum preventing gaseous exchange.” (’556 16 application, Exh. 2003, at 19:15–16; see Second Osswald Decl., Exh. 1018, at 13.) 17 Ford argues that, based Examples 1–4 and Dr. Osswald’s testimony, one of 18 ordinary skill would have understood that the panel of Figure 16 could not have 19 included a device with a portion outside of the enclosure because the molded part 20 would be entirely within the enclosure and, thus, any devices in the molded part 21 would be entirely within the composite material. (See id.) 22 We credit Dr. Osswald’s testimony to the extent it highlights the need to 23 consider Examples 1–4 of the ’556 application for an understanding of how one of 24 ordinary skill in the art would view Figure 16. Although Ecovative argues that Dr. 25 Osswald’s testimony should be dismissed because his experience is in polymer 26 Interference 106,069 10 processing,5 not growing mycelium, and because he does not name those who 1 informed him about the interference, we are persuaded that his testimony is useful 2 to show that portions of the ’556 application other than Figure 16 must be 3 considered when evaluating what is described and enabled. (See Ecovative Reply 4 1, Paper 60, at 8:19–9:6.) Ecovative’s Appeal Brief does not provide an analysis 5 of Examples 1–4 and does not provide evidence of how one of ordinary skill in the 6 art would have understood Figure 16 or the other portions of the ’556 application 7 Ecovative cites.6 Because Dr. Osswald’s testimony demonstrates how one of 8 ordinary skill in the art could interpret Figure 16 differently from the conclusive, 9 attorney argument presented in Ecovative’s Appeal Brief, we are not persuaded 10 that the preponderance of the evidence supports Ecovative’s arguments in its 11 Appeal Brief. 12 Ecovative argued further in its Appeal Brief that the ’556 application 13 provides an enabling disclosure of the method of claim 1 because its publication 14 was cited in a rejection of Ford’s currently involved ’224 patent. (See App. Br. 15 Exh. 2008, at 14–15.) According to Ecovative, the alleged owner of Senior Party 16 5 Dr. Osswald testifies that he is a professor in the Department of Mechanical Engineering at the University of Wisconsin-Madison and has over 30 years of experience working in the field of mechanical engineering and in particular, polymer engineering. (Declaration of Tim Osswald, Ph.D., Exh. 1012, at ¶¶ 2 and 5.) Dr. Osswald testifies that he has received numerous awards and has authored over 90 peer-reviewed publications and 14 books in the field of mechanical engineering, as well as serving on editorial and advisory boards and as a technical advisor and consultant for many organizations. (Id. at ¶¶ 6–8.) We find Dr. Osswald is qualified to testify about the technical issues presented here. 6 Ecovative’s Appeal Brief refers to “[p]age 29 of the Description,” but the text quoted is from the amendments to the specification of the involved ’601 application and does not appear in the ’556 application. (See Appeal Brief, at 15:7–16:6.) Accordingly, we do not consider this part of Ecovative’s Appeal Brief in regard to its Motion 1. Interference 106,069 11 Ford in this interference, “had access to the technology of Ecovative Design LLC 1 including the subject matter of Application No. 12/001,556 as early as November 2 2009.” (App. Br., Exh. 2008, at 14; see Ecovative Reply 1, Paper 60, at 4:13–5:8.) 3 Not only did Ecovative fail to cite evidence of any “access,” Ecovative also 4 provided no explanation and cited no other evidence to explain how the ’224 patent 5 is evidence of what is enabled or described in the ’556 application. Thus, 6 Ecovative’s argument is not persuasive. 7 Because Ecovative has failed to present a persuasive argument supported by 8 evidence that the ’556 application is a constructive reduction to practice of an 9 embodiment within the scope of Count 1, we deny Ecovative Motion 1. 10 Priority 11 Ecovative filed a Priority Statement but indicated only that “[t]he Party 12 Ecovative will move to be accorded benefit of the filing date of parent application 13 12/001,556 filed on December 12, 20017.” (Ecovative Priority Statement, Paper 14 30.) Accordingly, Ecovative does not assert a reduction to practice or conception 15 earlier than the filing date of its prior ’556 application. As explain above in regard 16 to Ecovative Motion 1, we determine that the ’556 application is not a constructive 17 reduction to practice of Count 1. Because the filing date of the application that 18 became Ford’s involved ’224 patent (9 June 2010) is earlier than the filing date of 19 Ecovative’s involved ’601 application (18 November 2013), Ecovative has failed 20 to prove an earlier reduction to practice or conception coupled with diligence and 21 has failed to prove priority over Ford. 22 Summary 23 Because it has failed to show that its involved claims are patentable under 35 24 U.S.C. § 102(g), we enter judgment against Ecovative, separately. We need not 25 decide Ford Motion 2 regarding the patentability of Ecovative’s claims over prior 26 art. 27 Interference 106,069 12 Ecovative Motion 1 is DENIED. 1 Ford Motion 2 Motion 2 is DISMISSED as moot. 2 Judgment will be entered separately. 3 cc (via e-mail): Attorney for Junior Party Ecovative: Francis C. Hand, Esq. Raymond J. Lillie, Esq. CARELLA, BYRNE, et al. fhand@carellabyrne.com rlillie@carellabyrne.com Attorney for Senior Party Ford Global: E. Anthony Figg, Esq. R. Danny Huntington, Esq. Seth E. Cockrun, Ph.D., Esq. ROTHWELL, FIGG, ERNST & MANBECK, P.C. efigg@rfem.com dhuntington@rfem.com scockrum@rfem.com

Kalisz et al. V. Bayer et al.