Takeaway: If a party can show the Board that it did not sufficiently address part of a prior art reference, the Board may grant rehearing of a decision. 

In its Decision, the Board granted the Request for Rehearing of the Decision not to institute trial as to grounds 1 and 2 of the ’799 Patent.  The ’799 Patent relates to antiparasitic pharmaceutical compositions said to be useful for treating flea infestation on pets, particularly dogs and cats.

The Board first reviewed claim 1.  Based upon the documents in the record, the information found on the internet, and the Handbook of Chemistry and Physics, the Board prepared a table of the solvents described by Huet ’333, and their dielectric constants and boiling points.  Patent Owner argued that the Board should review the request for rehearing under the substantial evidence standard, rather than the abuse of discretion.  However, the Board found that the request for rehearing should be reviewed under the abuse of discretion under Rule 42.71(c) standard. Patent Owner also maintained that a mere disagreement with the Board is not a proper basis for rehearing.  The Board found that there was not a “mere disagreement” in this case because the initial order never addressed the “optional” nature of the cosolvent.

Patent Owner conceded that there is precedent that optional inclusion of a particular component teaches compositions that both do and do not contain the component, but that this rule is not inflexible.  However, the Board found that “optional” in Huet ’333 means that the cosolvent may or may not be present.  The Board then analyzed the reference to show its reasoning, including a claim chart showing how Huet ’333 discloses all of the limitations of claim 1.  The Board also noted other references that were relied upon in grounds 1 and 2 that also disclose certain limitations.  Therefore, the Board found that Petitioner has shown a reasonable likelihood that claim 1 is unpatentable.  The Board then reviewed how the limitations of the remaining claims are disclosed in Huet ’333.

Merial Limited v. Virbac, IPR2014-01279

Paper 18: Decision Rehearing Granted – Institution of Inter Partes Review

Dated: April 15, 2015 

Patent 8,501,799 B2 

Before: Fred E. McKelvey, James T. Moore, and Linda M. Gaudette

Written by: McKelvey