The Board issued two decisions in TC 1600 during the week of June 25, both of which relate to Petitions filed by Trans Ova Genetics, LC (“Trans Ova”) against XY, LLC (“XY”).  Summaries of the decisions are below:

Trans Ova Genetics, LC v. XY, LLC, IPR2018-00249 (Decision Denying Institution Entered June 25, 2018).  In its petition, Trans Ova challenged claims 1-4, 7, 8, 10, 13, and 14 of U.S. Patent No. 6,372,422 (“the ’422 patent”) on six grounds based on references Hagele, Seidel, Nowshari, Donaldson, Spaulding, Rens, and Johnson.  XY filed a preliminary response.  The ’442 patent relates to methods for artificially inseminating a female mammal using sperm that are sorted by sex by flow cytometry.  Claim 1, the only independent claim, requires steps of “determining a sex of a sperm cell of a male mammal” and “sorting according to said sex of said sperm cells.”  In its decision construing the claims, the Board found that the “determining” step must occur before the “sorting” step.  Further, the parties did not dispute that the “sorting” step must be performed by flow cytometry.  Finding that the Petitioner failed to provide any evidence that the cited references determine the sex of sperm cells prior to sorting them by flow cytometry based upon that determination, the Board denied institution of inter partes review.

Trans Ova Genetics, LC v. XY, LLC, IPR2018-00250 (Decision Granting Institution Entered June 27, 2018).  In a second petition, Trans Ova challenged claims 1-16 of U.S. Patent No. 8,652,769 (“the ’769 patent”) on five grounds of obviousness based on references Lu, Seidel, Johnson, and Rens.  The ’769 patent is directed to methods for producing a sperm sample for use in artificial insemination.  XY filed a preliminary response.  Patent Owner first disputed Petitioner’s contention that Lu qualifies as prior art under 35 U.S.C. § 102(a) because all listed authors are also named inventors and thus Lu is not the work of “another.”  Although the Petition did not include any argument or evidence that Lu is the work of someone other than the patent’s inventors, the Board determined that Petitioner met its initial burden of production to show that Lu is prior art under § 102(a) because Lu attributes relevant data to an individual named “Green,” who is not named as an author or inventor.  In a dissenting opinion, Judge Obermann disagreed with the other members of the panel, stating that instituting trial on issues surrounding Green is unfair to the Patent Owner because not only did the Petition fail to mention Green, Petitioner did not raise the issue of Green until after Patent Owner filed its Preliminary Response in a request to file a reply brief that would raise issues surrounding Green—a request that was expressly denied by the Board.

The Board then turned to the first ground that challenges claim 16 in view of Lu and Johnson. Claim 16 includes a limitation that requires the sperm samples to be “capable of fertilizing an egg at success levels of at least about 70% of the success levels with sperm cells that have not been separated and/or frozen.”  During prosecution, the Examiner allowed the claims over Lu and Seidel because neither reference disclosed the claimed 70% fertilization success rate.  However, the Board declined Patent Owner’s request to the Board to deny review under 35 U.S.C. § 325(d) because Petitioner presented a new argument that differed substantially from the argument at issue during prosecution.  Specifically, Petitioner argued that the data shown in Tables 1 and 3 of Lu does in fact disclose the claimed 70% fertilization success rate by dividing the blastocyst percentage of one of the frozen-thawed sorted samples (Table 3, 17%) by the blastocyst percentage of one of the unfrozen samples (sorted and unsorted) (Table 1, 24%).  Consequently, the Board granted institution of inter partes review on all asserted grounds—as required by the Supreme Court’s recent decision in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359-60 (2018)—because it found that Petitioner showed that there is a reasonable likelihood that it would prevail in showing the unpatentability of claim 16 over the combination of Lu and Johnson.