The PTAB denied institution of an IPR based on patent owner’s challenge to the prior art status of a PCT publication that was asserted by the petitioner as pre-AIA 35 U.S.C. § 102(e) prior art in Forty Seven, Inc. v. Stichting Sanquin Bloedvoorziening, IPR2016-01529, Paper 13 (P.TA.B., Feb. 9, 2017).

The petitioner requested inter partes review of U.S. Patent No. 9,352,037 (“the ’037 patent”). Two obviousness grounds were asserted; each relied on WO 2009/091547 to Majetti (“Majetti”) as the primary reference but different secondary references. The petitioner asserted Majetti was prior art under pre-AIA § 102(e), and Majetti’s effective prior art date was the filing date of Majetti’s priority application, U.S. Provisional Application No. 61/011,324, which predated the ’037 patent. The petition asserted that claim 10 of the provisional application, which was identical to claim 10 of Majetti, provided the written description support required to establish Majetti’s earlier effective prior art date.

In the preliminary response, the patent owner argued that claim 10 of the provisional application does not provide written description support for claim 10 of Majetti, and therefore Majetti was not available as prior art. Specifically, the patent owner asserted that claim 10 of Majetti is directed to a broad genus of agents for treating acute myeloid leukemia cancer stem cells, and the provisional application failed to provide a representative number of species to adequately describe the genus of claim 10.

The PTAB agreed with the patent owner. The PTAB applied Dynamic Drinkware, LLC, v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) and required the claims of Majetti to be supported by the disclosure of the provisional application (under 35 U.S.C. § 112). However, the presence of the exact same claim language in the provisional application did not provide sufficient support in this case. Because claim 10 of Majetti encompassed a “broad genus of agents defined exclusively by the function they perform,” and the provisional application did not provide representative examples or structural features of the claimed agents, the PTAB found there was insufficient written description support for Majetti’s claim 10 under the Federal Circuit’s requirements in Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (“[A] sufficient description of a genus . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the genus so that one of skill in the art can visualize or recognize the members of the genus.”). Accordingly, Majetti was not entitled to the filing date of the provisional application. Since only Majetti’s provisional application filing date preceded the filing date of the ’037 patent, the PTAB did not analyze whether the specification of the later regular application was sufficient and held that Majetti was not prior art to the ’037 patent under pre-AIA 35 U.S.C. §102(e) and denied institution of the IPR.

This case illustrates the additional care a petitioner should take in asserting a reference that relies on an earlier filing date under pre-AIA 35 U.S.C. § 102(e) or AIA 35 U.S.C. § 102(a)(2), and how a patent owner may be able to challenge the prior art status of a reference asserted under either statutory provision.