A Patent Trial and Appeal Board (PTAB) panel has denied institution of inter partes review proceedings because the petitioner did not establish a patent qualified as prior art under 35 U.S.C. § 102(e). PTAB was not persuaded that the putative 102(e) patent’s issued claims had written description support in the provisional application from which the patent claimed priority.
In the petition, Benitec Biopharma Ltd. (“Petitioner”) asserted the claims of U.S. Patent No. 8,202,846, owned by Cold Spring Harbor Laboratory (“Owner”), were invalid for anticipation by U.S. Patent 7,691,995 (“the Zamore patent”) under § 102(e). The technology at issue involves triggering biological responses using ribonucleic acid (RNA) molecules.
PTAB stated that the Zamore patent could qualify as 102(e) art only if Petitioner “demonstrate[d] that the  provisional application provide[d] written description support for at least one claim of the Zamore patent,” citing the Federal Circuit’s decision in Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015).
In its analysis, PTAB first juxtaposed the claims of the Zamore patent, covering various lengths of RNA, with the description provided in the provisional application. PTAB agreed with Owner that the limitations of the claims in the Zamore patent (ranges of 18–40; 22–28; 18–30; and 18–40 nucleotides) were not found in, or supported by, the disclosure of the provisional application (ranges and specific lengths of 19–22; 21 or 22; and 21 or 40 nucleotides).
Next, PTAB disagreed with Petitioner’s argument the Zamore patent claims had inherent support. Petitioner argued that the necessary RNA lengths for the biological responses were “widely known” to a person having ordinary skill in the art (skilled artisan). PTAB stated that claims cannot be supported by “a description that merely renders the invention obvious,” and an “allegedly inherent characteristic” must “necessarily flow from the teachings of the applied prior art.” Noting that Petitioner had not presented any expert opinion about the understanding of a skilled artisan, PTAB was not otherwise convinced by Petitioner’s “limited evidence and assertion[s].”
Ultimately, because Petitioner did not show that the Zamore patent qualified as 102(e) art, PTAB found that Petitioner had not established a reasonable likelihood that it would prevail on the asserted ground.
Benitec Biopharma Ltd. v. Cold Spring Harbor Lab., IPR2016-00014, Paper 7 (PTAB Mar. 23, 2016).
[Pollock (opinion), Scheiner, Snedden]