In its seventh PGR institution, the PTAB recently decided for the first time that a patent asserting a pre-AIA effective filing date was eligible for post-grant review because it contained at least one claim that was only entitled to a post-AIA effective filing date.  Although some claims were entitled to a pre-AIA effective filing date, PGR was instituted for all of the patent claims, on all five of the prior art grounds asserted by the petitioner.  Inguran, LLC d/b/a/ Sexing Technologies v. Premium Genetics (UK) Ltd. (Institution Decision, PGR2015-00017). In this case, the patent owner may have been handicapped by its inability to present new declaratory evidence—a scenario that may change soon given the PTAB’s proposed new rules that would allow patent owners to include new testimonial evidence with an opposition to  petition.

U.S. Patent 8,933,395 (the “’395 Patent”) is directed to systems for sorting cells such as blood or semen using multiple laminar flows which further may be coupled with laser steering.  These types of systems can discriminate between animal sperm that contain X-chromosomes vs. Y- chromosomes.  The requested PGR is part of a long running dispute between the parties involving multiple issues and multiple patents; related cases include ABS Global, Inc. v. Inguran, LLC (W.D. Wis. Case No. 14-cv-503), and ABS Global v. XY, LLC (a subsidiary of Inguran), IPR2014-01161 and IPR2014-01550.

The petitioner argued that PGR was appropriate because, inter alia, claims 1 and 2 were not entitled to a pre-AIA effective filing date.  Although the ‘395 Patent was a direct continuation of pre-AIA patent applications filed before March 15, 2013, with the same text as those prior applications, the petitioner alleged that the prior specifications lacked written description for certain claim elements of claims 1 and 2.  The petitioner also asserted lack of enablement, indefiniteness, anticipation based on three primary references:  Mueth, Frontin-Rollet, and Durack, and obviousness based on combinations of further references.

In its preliminary response, the patent owner focused on whether the patent was pre-AIA or post-AIA, without making any effort to rebut the adequacy of the prior art challenges.  It argued that the ‘395 Patent had been “expressly examined under the pre-AIA first-to-invent provisions” and that the Office “necessarily evaluated whether the ‘395 Patent claims had written description support during prosecution.”  Thus, the patent owner argued that the Board “should not perform an effective filing date analysis as part of its institution decision in cases where, as here, the prosecution history establishes that the patent is entitled to pre-AIA treatment.”  The patent owner also pointed to the “unbalanced evidence” available at this stage since the petitioner could present expert witness testimony yet the patent owner cannot.

Finally, the patent owner argued that the burden to prove lack of priority entitlement at this stage of the IPR should be on the petitioner, despite the Federal Circuit’s decision inPowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008), that there should not a presumption that a patent is entitled to an earlier priority date where the PTO has not made a determination regarding priority.  The PTAB decided that under 37 C.F.R. § 42.204(a), “the petitioner bears the burden of setting forth grounds for standing for post-grant review.”  The PTAB also reconfirmed the Patent Office’s position that 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.”

Turning to the merits, the PTAB decided that claim 1 was entitled to a pre-AIA effective filing date, but claim 2 was not.  In particular, the features of constriction, alignment, and orientation of the cells were deemed to be insufficiently disclosed in the patent specification.  The PTAB agreed with the petitioner that the mere possibility of cell alignment through shear flows was insufficient to disclose cell alignment “such that the flat sides of the cells are oriented parallel to confronting walls of the flow chamber,” and that application did not convey possession of the specific constriction and cell orientation elements recited in claim 2.

The PTAB rejected the enablement ground because the petitioner “does not provide sufficient analysis of the Wands factors or present sufficient objective evidence to demonstrate that undue experimentation would be necessary.”  The PTAB also was not persuaded by the indefiniteness argument.

The PTAB found that petitioner had shown that it was more likely than not that claim 1 was anticipated by each of Mueth, Frontin-Rollet and Durack, and that claims 2-13 were anticipated by Mueth, claim 14 was obvious over Mueth and another reference, and claims 2-14 were obvious over Durack and two other references. However, the patent owner requested rehearing and argued that Frontin-Rollet and Mueth (both of which were prior art under 35 U.S.C. §102(e) and were argued to be entitled to 2005 filing dates) should not be prior art to claim 1 if it is given benefit of its earliest claimed priority date of September 3, 2004, which it should be since the PTAB rejected the petitioner’s arguments that claim 1 was not entitled to a pre-AIA priority date.  No decision on this request has yet been made.

even one post-AIA claim can put all of the patent claims, even claims entitled to pre-AIA status, at risk of invalidation by a post-grant review challenge

This case highlights the importance of ensuring pre-AIA priority benefit for all claims, at all times.  According to this decision, even one post-AIA claim can put all of the patent claims, even claims entitled to pre-AIA status, at risk of invalidation by a post-grant review challenge.