A recent decision by the PTAB, Inguran v. Premium Genetics, demonstrates that a Petitioner may subject an apparent “pre-AIA” patent, having at least one priority date before and at least one priority date after March 6, 2012, to the post-grant review (PGR) process. By arguing that at least one claim is not entitled to the pre-AIA priority date based on failure to comply with the written description requirement (even where the patent is based on straight continuations), the PTAB may institute PGR, and it may do so for all claims challenged even though only one claim is found to lack priority. In the IPR context, bio/pharma patents have been targeted with such priority denial arguments where intervening prior art references were asserted between continuation filing dates (see “Attacking Patents on Written Description & Enablement Grounds in Inter Partes Review”).

Background

Premium Genetics’ U.S. Patent 8933395 issued January 13, 2015, from an application filed January 31, 2104. The application was a continuation of a parent filed March 6, 2012 and claimed a long chain of priority dates to 2002. The ‘395 patent was examined under the pre-AIA first to invent rules and was allowed without the Examiner raising any questions of written description support for the claims. Given a priority claim based on an assertion that the application is a “continuation”, the resulting patent appeared on its face to be a “pre-AIA” patent.

Establishing Standing for PGR

To create standing for a PGR, Petitioner Inguran asserted that at least one claim lacked written description support in a pre-AIA parent application and cited to an IPR decision to support the proposition that an effective filing date analysis is an appropriate part of the decision to institute PGR.

In opposing institution of PGR, Patent Owner argued that:

“it would be both inefficient and unfair to force a patent owner to undergo a post-grant review proceeding of a pre-AIA patent only to have the Board ultimately conclude that a patent was ineligible for post-grant review and that [Petitioner lacked standing]. The procedures for post-grant review themselves buttress this conclusion, as they allow the Petitioner to present expert witness testimony on this issue, while the Patent Owner ordinarily cannot do the same at the institution stage. This [standing] issue should not be decided on such unbalanced evidence.”

The PTAB did not agree because “[a]fter institution, standing issues may still be raised during trial” and “Once a proceeding is initiated, a party . . . may challenge standing in its patent owner response.”

The PTAB was also unmoved by the fact that the patent had been examined under the pre-AIA rules, and that the prosecution history raised no issues of priority, written description or any other issue under 35 U.S.C. § 112, ruling that 35 U.S.C. § 324 provided the PTAB with the requisite authority.

In sum, the PTAB found that claim 1 was supported by the priority documents, but that independent claim 2 was “not disclosed in [the pre-AIA parent] in a matter required by 35 USC 112(a).” As a result, all claims of the ‘395 patent (including claim 1) were open for PGR.

Anticipation and obviousness under the first-to-file rules

With the determination that the ‘395 patent was effectively a post-AIA patent, all claims lost their earlier filing date of 2002 and were presumed to have an effective filing date of January 31, 2104 under the AIA first to file rule. This allowed petitioner to cite a range of references as 35 U.S.C. §§ 102,103 references. The key reference was the first inventor’s own patent from a different patent family, which had a filing date of 2005. The PTAB was convinced that it was “more likely than not” that all claims were anticipated or rendered obvious.

The PTAB denied institution of PGR on the grounds of indefiniteness under 35 U.S.C. § 112(b), or under enablement under 35 U.S.C. § 112(a), noting that the Petitioner had not addressed all of the Wands factors.

PTAB Noted That Priority Determination Extends To Any Claim Presented, Not Just Issued Claims

According to the PTAB, PGR might even be instituted based on lack of priority for claims that are not in the issued patent. If an applicant presents any claim lacking support, the entire application and resulting patent may be subject to PGR and AIA rules. As explained by the PTAB in the Decision to Institute PGR in Inguran v. Premium Genetics:

“The issue turns on whether the patent contains, or the corresponding application contained at any time, a claim that is not entitled to the benefit under §§ 119, 120, 121, or 365 to an earlier filing date prior to March 16, 2013. Therefore, a patent granted from a transitional application would be available for post-grant review, if the patent contains, or the corresponding application contained at any time, at least one claim that was not disclosed in compliance with the written description and enablement requirements of § 112(a) in the earlier application for which the benefit of an earlier filing date prior to March 16, 2013 was sought.”

This suggests that practitioners will need to look beyond the issued claims and through the entire file history to determine whether there is an argument supporting PGR eligibility.