Syngenta Participations AG

Patent Trials and Appeals Board

Aug 10, 2020

IPR2020-00124 (P.T.A.B. Aug. 10, 2020)

Trials@uspto.gov Paper 18
571-272-7822 Date: August 10, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BORAGEN, INC.,
Petitioner,

v.

SYNGENTA PARTICIPATIONS AG,
Patent Owner.
____________

IPR2020-00124
Patent 10,130,096 B2
____________

Before SHERIDAN K. SNEDDEN, ROBERT A. POLLOCK, and
TIMOTHY G. MAJORS, Administrative Patent Judges.

MAJORS, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request on Rehearing
of Decision Denying Institution of Inter Partes Review
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
Boragen, Inc., (“Petitioner”), requests rehearing of our decision
(Paper 16, “Decision” or “Dec.”) denying institution of inter partes review of
claims 1–12 of U.S. Patent No. 10,130,096 (Ex. 1001, “the ’096 patent”).
Paper 17 (“Request” or “Req.”). We deny the Request for the reasons
explained below.
II. STANDARD OF REVIEW
In response to a request for rehearing, the panel reviews a decision
whether to institute trial for an abuse of discretion. 37 C.F.R. § 42.71(c).
An abuse of discretion may be found if there was an erroneous interpretation
of law, a factual finding not supported by substantial evidence, or an
unreasonable judgment in weighing relevant factors. 37 C.F.R. § 42.71(c);
Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); The Arnold
Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside,
203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “The burden of showing a
decision should be modified lies with the party challenging the decision.”
37 C.F.R. § 42.71(d). The rehearing request “must specifically identify all
matters the [requesting] party believes the Board misapprehended or
overlooked, and the place where each matter was previously addressed in a
motion, an opposition, or a reply.” Id.
III. OVERVIEW OF PETITIONER’S REQUEST
Petitioner contends that the Board “overlooked or misapprehended
key distinctions regarding the evidence” on which the Petition was based.
Req. 1. According to Petitioner, the matters overlooked or misapprehended
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include the declarations of Drs. Brannen and Hall, and the subject matter of
the asserted “Sibley” reference (Ex. 1006). Id. at 1, 3–8. Petitioner also
contends that, “there were material errors by the Office” in prosecution of
the ’096 patent that were “not properly considered by the Board.” Id. at 1–2,
8–10 (citing in Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte
GMBH, IPR2019-01469, Paper 6 at 10 (Feb. 13, 2020) (precedential)
(hereafter “Advanced Bionics”)). From this, Petitioner argues “the Board
failed to exercise its discretion under 325(d) and improperly concluded that
the information presented does not show that there is a reasonable likelihood
that Petitioner would prevail in establishing that at least one claim of the
’096 patent is unpatentable.” Id. at 2.
IV. ANALYSIS
Petitioner’s argument requesting rehearing is flawed from the outset.
Petitioner contends the Board “failed to exercise its discretion under 325(d)”
(Req. 2), but this is plainly inconsistent with the Decision, because we did
exercise discretion under § 325(d) and denied the Petition because it was
based on substantially the same prior art as already considered by the Office.
See Dec. 6–35 (analyzing, inter alia, the asserted prior art, the prosecution
history, declarant testimony, and the precedential Becton, Dickinson factors
under a framework explained further in Advanced Bionics, in route to denial
under § 325(d)).1 Petitioner continues, arguing the Board “improperly

1 Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-
01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5,
first para) (hereafter “Becton, Dickinson”).
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concluded” that the Petition “does not show a reasonable likelihood” that
any challenged claims are unpatentable. Req. 2. This too is incorrect. We
denied the Petition on a discretionary basis, and the Decision does not reach
a conclusion on the “reasonable likelihood” issue.
Petitioner’s other contentions fare no better in demonstrating that its
Request should be granted. We discuss below.
Petitioner argues the “Board misapprehended the evidence and
misapplied its own governing regulations by overlooking or giving no
weight to Dr. Brannen’s unrebutted expert testimony, which demonstrates
that the claims are invalid.” Req. 3 (citing 37 C.F.R. § 42.108(c)).2
According to Petitioner, the Board “made no mention of the Brannen Decl.
in the decision, much less viewed the [declaration] . . . in the light most
favorable to Petitioner.” Id. at 4.
This argument is unavailing for at least two reasons. First, that an
“expert” may opine on the unpatentability of the challenged claims generally
represents one factor that we account for in exercising our discretion under
§ 325(d) (e.g., insofar as it may comprise “additional evidence” addressing
prior art that the Office may have already considered). Becton, Dickinson at
17–18. It is not, however, a super-factor that overrides others in the manner
urged by Petitioner that would, in effect, require we institute inter partes
review so long as the challenge is accompanied by “new” testimony

2 In its discussion about Drs. Brannen and Hall (Req. 3–6), Petitioner cites a
handful of paragraphs from their declarations, but fails to identify where in
the Petition itself the allegedly “misapprehended” or “overlooked” subject
matter was addressed, as is required by rule. 37 C.F.R. § 42.71(d).
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declaring the claims obvious. Becton, Dickinson is instructive on this point.
In that case, the Board expressly weighed, under factor (f), the testimony of
Petitioner’s expert, which “was not [previously] considered by the
Examiner,” yet still determined that discretionary denial was warranted. Id.
at 28 (finding “Mr. Griffis’s declaration does not provide persuasive facts,
data, or analysis to support the stated [unpatentability] opinion”).3 Second,
Petitioner’s contention that the Board “made no mention” of the Brannen
Declaration in our Decision here is not accurate. We noted generally
Petitioner’s reliance on Dr. Brannen’s (and Dr. Hall’s) declarations, and we
expressly cited numerous paragraphs of the Brannen Declaration—including
paragraphs Petitioner argues we overlooked—and we explained that such
declaration testimony was only vaguely addressed in the Petition and, in any
event, conclusory and unpersuasive on issues such as reasons for combining
the asserted prior art. Dec. 6, 19 n.14 (citing Ex. 1018 (Brannen
Declaration) ¶¶ 63–65, 82–85).4

3 Becton, Dickinson was decided pre-SAS and, thus, the Board denied some
grounds under § 325(d), but instituted on other grounds. Becton, Dickinson
at 28, 38; SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018).
4 To show consideration of the evidence, it is not necessary that our Decision
recite every paragraph of the declaration. Cf. Plant Genetic Systems, N.V. v.
DeKalb Genetics Corp., 315 F.3d 1335, 1343 (Fed. Cir. 2003). (“The fact
that the district court did not in its opinion recite every piece of evidence
does not mean that the evidence was not considered.”); Medtronic, Inc. v.
Daig Corp., 789 F.2d 903, 906 (Fed. Cir. 1986) (“We presume that a fact
finder reviews all the evidence presented unless he explicitly expresses
otherwise.”).
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We also do not agree that the Board “misapplied its own governing
regulations” under Rule 42.108(c) as asserted by Petitioner. Req. 3; see also
id. at 6 (raising same argument with respect to the Hall Declaration). In
context, the cited rule expressly relates to a petitioner’s institution burden,
where the “Board decides” such burden is met—whether the petition shows
“that there is a reasonable likelihood that at least one of the claims
challenged in the petition is unpatentable.” 37 C.F.R. § 42.108(c) (2019).
We did not reach a decision on the “reasonable likelihood” question as
already explained, and, in any case, we evaluated the declaration testimony
in determining that the Board’s exercise of statutory discretion under
§ 325(d) was appropriate (e.g., in assessing whether material error was
shown). We did not misapply the rule in doing so. Nor does the rule, as
Petitioner later argues, “requir[e] factual disputes involving expert testimony
be resolved in favor of institution.” Req. 6 (emphasis added). The rules do
not require or favor institution. Institution is, ultimately, at the Patent
Office’s discretion. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
(2016) (“[T]he agency’s decision to deny a petition is a matter committed to
the Patent Office’s discretion.”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled,
to institute an IPR proceeding.”).
Turning to the Hall Declaration, Petitioner argues “the Board
misapprehended the evidence by diminishing Dr. Hall’s unrebutted expert
testimony as lacking documented support.” Req. 4. Petitioner’s argument
that we “misapprehended . . . by diminishing” this evidence is not an
argument that the Board overlooked or misapprehended anything. Id.
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(emphasis added). Quite the opposite, this argument goes to the weight we
gave the evidence. But the Board is not required to find a parties’ argument
or evidence persuasive, and the weight we accord evidence does not, as a
general matter, support a request for rehearing. Petitioner does not contest
our determination that there was no documented factual support in the record
to buttress Dr. Hall’s bare opinion that certain prior art compounds with a
“bulky” substituent would have low antifungal activity. Dec. 31; In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board
is entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations.”); see also Becton, Dickinson at 28 (discounting expert opinion
that lacked factual support). And, Petitioner’s attempt to explain away now
(via attorney argument) the record evidence we cited as undermining
Dr. Hall’s unsupported opinion comes too late and is insufficient. Req. 5–6.
We turn next to the Sibley reference. Petitioner argues the Board
“misapprehended the evidence by improperly narrowly interpreting the
teachings of Sibley.” Req. 7. Here again, this is not an argument that
supports the grant of Petitioner’s rehearing request. That the Board
disagreed with Petitioner’s unreasonably broad reading of the reference, for
the reasons explained in detail in the Petition (Dec. 22–27), does not show
that the Board overlooked or misapprehended the teachings of Sibley.
Petitioner’s attempt to reargue the same issue fails for the reasons it did
initially. Dec. 22–27 (rejecting Petitioner’s contention that Sibley teaches
that AN2718 had a known utility as an agricultural fungicide).
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Petitioner now also contends that “Sibley is not cited for suggesting
selection of [AN2718] as the preferred embodiment for use as an agricultural
fungicide.” Req. 7 (contending such teaching is supplied by Austin).
“Rather,” Petitioner argues, “Sibley is provided to show that a POSITA
would have reasonably expected that AN2718 could be used successfully as
an agricultural fungicide.” Id. at 8 (contending that Sibley “has clearly
offered that reasonable expectation [of success]”)). This is an apparent
change in position, and we did not misapprehend or overlook it because it
was not presented in the Petition. The notion that Sibley was not offered by
Petitioner in specific “combination” with Austin (or Austin, Kohn), for
Sibley’s alleged teaching of use of AN2718 as an agricultural fungicide in
order to satisfy the limitations of the claimed method is contradicted,
repeatedly, by the Petition itself. See, e.g., Pet. 30 (“The combination of
Austin and Sibley discloses all the limitations of claims 1-12 . . . . Sibley
discloses the use of 5-chloro benzoxaborole [i.e., AN2718] as an agricultural
fungicide.”); id. at 34–41 (claim chart citing Austin and Sibley).
Petitioner, to justify its changed reliance on Sibley, now cites its
Petition at page 8. Req. 8. But that page is simply an overview of Sibley,
and says nothing about the newly alleged “reasonable expectation” of
success evidenced by Sibley in arriving at the method claimed. Id.; Pet. 8.
And, Petitioner’s new argument is all the more troubling when Petitioner
argued previously, in trying to avoid § 325(d) denial, that “[o]f the four
grounds presented herein, three rely on new combinations of prior art that
were not previously presented to the Examiner.” Pet. 3. The only “new” art
asserted in any of the four proposed art combinations is Sibley because
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Austin, Kohn, and Baker were before the Examiner during prosecution as we
explained in our Decision. Dec. 6–12 (prosecution history summary, 15–22
(explaining that Austin and Kohn were the basis of five obviousness
rejections, and that a Baker family member with the same key disclosures as
Baker was cited to the Examiner as well).5 Regardless, we are unpersuaded
our earlier interpretation of Sibley was incorrect, and we decline to change
the Decision based on Petitioner’s attempt to reargue settled issues (or inject
new issues it did not argue clearly in the Petition) based on Sibley.
Finally, Petitioner contends that there were material errors by the
Office during prosecution of the ’096 patent. Req. 8–10. According to
Petitioner, such errors “are apparent based on the statements and references
presented in the Petition.” Id. (“Accordingly, the Petition identified material
errors by the Office under the second prong of Advanced Bionics”).
Petitioner’s final argument is unavailing because if fails to identify
anything that the Board misapprehended or overlooked in arriving at the
Decision. We considered, for example, the extensive prosecution history
related to whether the Applicant’s data was sufficiently commensurate in
scope with the claims, Petitioner’s argument that the Examiner was misled
by the “Zeun Declaration” because it allegedly failed to test structurally
closer prior art compounds. See, e.g., Dec. 28–31; see also id. at 6–11
(analysis of prosecution history). So too, we considered Dr. Hall’s
testimony about the alleged “bulky” groups on some antifungal compounds

5 Although Sibley was not officially of record during the ’096 patent’s
prosecution, it is cumulative to art before the Examiner during prosecution
for reasons explained in our Decision. Dec. 26–27.
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and whether that meant the results reported during prosecution would have
been expected. Id. at 31–32. We need not repeat our analysis applying the
precedents of Becton, Dickinson and Advanced Bionics—that too, is detailed
in the Decision. Id. at 27–35.
Petitioner urges us to reach a different result on the issue of “material
error” upon considering this same evidence. But that is not a basis for
granting its rehearing request. At bottom, as we explained in the Decision,
we were not persuaded that Petitioner’s criticisms of the prosecution record
demonstrate an error by the Office that justifies the Office reconsidering in
inter partes review the patentability of the same claims over substantially the
same prior art. Dec. 15–35. On that, Petitioner’s Request does not change
our mind. The discretionary denial under § 325(d) stands.
V. OTHER
Petitioner, in a footnote, points out that Advanced Bionics became
precedential after the Petition was filed, and requests “additional briefing to
directly address the Advanced Bionics factors” if this Request is denied.
Req. 1 n.1. Petitioner’s request for additional briefing is denied. Additional
briefing is unnecessary because the arguments and evidence already
submitted by the parties is sufficient for us to make a determination based on
the two-part framework in Advanced Bionics. Furthermore, we have
reviewed the arguments based on Advanced Bionics submitted by Petitioner
on rehearing and do not find them persuasive. Req. 8–10 (“Petitioner
highlights such errors herewith separately under the guidelines set forth in
Advanced Bionics”). Moreover, Advanced Bionics became precedential six
weeks before we denied institution in this case, where discretionary denial
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under 35 U.S.C. § 325(d) was clearly at issue—an entire section of Patent
Owner’s Preliminary Response is devoted to the topic. Paper 15, 54–60.
Under such circumstances, Petitioner could have, yet did not, request
additional pre-institution briefing to address Advanced Bionics if it believed
that was prudent. And finally, the “factors” in Advanced Bionics come from
the Board’s earlier precedential decision in Becton, Dickinson. Becton,
Dickinson, at 17–18. Advanced Bionics analyzes the six factors of Becton,
Dickinson in a two-part framework. Advanced Bionics at 9–11 (explaining
that “the Becton, Dickinson factors[] provide useful insight into how to apply
the framework under 35 U.S.C. § 325(d)”). But the factors of Becton,
Dickinson remain—indeed, we applied them here in deciding that
discretionary denial was justified. Dec. 14–35 (describing and applying “the
Becton, Dickinson factors”). Becton, Dickinson was designated informative
in 2018, and precedential in August 2019, well before the present Petition
was filed. Yet the Petition neither cites Becton, Dickinson, nor addresses
explicitly its enumerated factors (e.g., factor (e), “whether Petitioner has
pointed out sufficiently how the Examiner erred in its evaluation of the
asserted art”). Becton, Dickinson at 17–18; see, e.g., Pet. 3–4 (Section titled
“Considerations under § 325(d)” with no express factor-based analysis)). As
we pointed out, “Petitioner d[id] not expressly assert any ‘error’ by the
Office,” (Dec. 27); our Decision is clear, however, that we liberally
construed Petitioner’s various criticisms of the prosecution of the
’096 patent as allegations of error in our § 325(d) analysis. Id. at 27–35.
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VI. CONCLUSION
For the reasons above, we conclude that Petitioner has not shown that
we abused our discretion in denying institution under 35 U.S.C. § 325(d).
Accordingly, we deny Petitioner’s Request.
VII. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s Request for Rehearing is denied.

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FOR PETITIONER:

Chen Chen
Lauren Krickl
COOLEY LLP
cchen@cooley.com
lkrickl@cooley.com

FOR PATENT OWNER:
James Cueva
james.cueva@syngenta.com

Toni-Junell Herbert
Michael E. Anderson
BAKERHOSTETLER LLP
therbert@bakerlaw.com
meanderson@bakerlaw.com