Hospira, Inc. v. Genentech, Inc.

Paper No. 16, July 27, 2017

IPR2017-00739 (Patent 7,892,549 B2)

FACTS

Petitioner Hospira petitioned for inter partes review of claims 1-11 and 14-17 of U.S.P.N. 7,892,549 B2.  Patent Owner Genentech filed a Preliminary Response. Institution was denied.

HOLDING

The Board can exercise its discretion and deny IPR trial where an Examiner determined the same priority issue during prosecution that was raised by Petitioner in the IPR Petition, and where Petitioner’s prior art and arguments were previously raised to the Office during prosecution of a corresponding patent application. See Paper 16, pp. 17-18.

TAKEAWAY

Petitioner asserted that the ‘549 claims were anticipated in view of certain prior art, and that the challenged claims are not entitled to an earlier priority date.    Petitioner explained that the challenged claims do not have written description support and not enabled by the disclosure of the earlier provisional application.  See Paper 16, pp. 13-14.

However, Patent Owner argued that the U.S. Patent Examiner during prosecution (of an earlier related application) already made a priority determination that the challenged claims are entitled priority to the provisional application, and the Examiner withdrew a rejection based on one of the same prior art references (Nabholtz; Ex. 1114). See Paper 16, p. 7.

Institution of trial is discretion.  PTAB determined that “the Examiner considered fully the written description and enablement issues underlying Applicant’s claims to priority in allowing the claims to issue, and Petitioner has not presented new evidence or arguments that would convince us that the Examiner’s determination was unreasonable.”  See Paper 16, p. 18.  Also: “The Examiner’s decision to withdraw the anticipation rejection over Nabholtz was expressly predicated on that priority determination …”.  See Paper No. 16, 18.  Further, the Petitioner’s prior art and arguments were previously raised to the Office during prosecution of a corresponding patent application.  Thus, institution was denied.

A copy of the PTAB order can be found here.