1. Insights
  2. Blogs
  3. IP Newsflash

PTAB Not Convinced by Petitioner’s Argument a Provisional Application’s Inherent Disclosures Showed a Patent Qualified as 102(e) Art

Mar 30, 2016

Reading Time : 1 min

By: Jonathan James Underwood

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., IPR2016­00014, Paper 7 (PTAB Mar. 23, 2016).

[Pollock (opinion), Scheiner, Snedden]

Share This Insight

Categories

35 U.S.C. § 102Patent Trial & Appeal BoardInter Partes ReviewPrior Art
Subscribe to the IP Newsflash Blog Series >

Previous Entries

IP Newsflash

February 24, 2026

The Southern District of Florida recently dismissed a complaint without prejudice because the allegations used a form of “shotgun pleading.” The court explained that a shotgun pleading includes those where every count incorporates every preceding paragraph into each cause of action, and that dismissal of such pleadings was required under Eleventh Circuit precedent.

...

Read More

IP Newsflash

February 20, 2026

The Federal Circuit recently addressed whether the PTO must conduct notice‑and‑comment rulemaking before issuing instructions that guide how the Board should exercise discretion at the institution stage of IPRs. The court held that no such rulemaking is required. Instructions to the Board regarding its use of the Director’s delegated discretionary authority not to institute review are merely general statements of policy exempt from notice-and-comment rulemaking.  

...

Read More

IP Newsflash

February 18, 2026

The District Court for the District of Delaware recently invalidated claims directed to a panoramic objective lens for lack of enablement, holding the claims impermissibly recited a single element in means‑plus‑function form. Under § 112, ¶ 6, “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function….” By its plain terms, the statute permits means‑plus‑function claiming only in the context of a “combination.” In other words, a claim may not consist solely of a single means‑plus‑function element. Claims drafted as a single means are invalid for lack of enablement as a matter of law.

...

Read More

IP Newsflash

February 13, 2026

In an ANDA litigation, the District of Delaware recently denied the defendants’ motion to compel the production of correspondence between the plaintiffs’ testifying expert and a third-party analyst who had performed experiments and provided data used by the testifying expert. The court found that the scope of material sought by the motion was overbroad and disproportionate to the needs of the case.

...

Read More

© 2026 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.