The Patent Trial and Appeal Board issued two decisions in TC 1600 during the week of August 27-31, 2018.  The first decision denied institution of an IPR petition filed by Hologic Inc. (Hologic) against bioMérieux, Inc. (bioMérieux).  The second decision denied institution of a PGR petition filed by Rimfrost AS (Rimfrost) against Aker Biomarine Antarctic AS (Aker).  The decisions are as follows:

Hologic Inc. v. bioMérieux, Inc., No. IPR2018-00566 (Decision Entered August 24, 2018).

In this Petition, Hologic challenged U.S. Patent No. 9,074,262 (“the ’262 patent”) on an obviousness ground based, on references by Sooknanan and Myers published in 1995 (“the 1995 Myers”).  The ’262 patent relates to methods for diagnosing HIV-1 infections via amplification and detection of HIV-1 nucleic acid.  The challenged claims recite amplification methods using a first primer of SEQ ID NO: 1 and a second primer of SEQ ID NO: 5.  bioMérieux filed a preliminary response to the Petition.  The Board exercised its discretion to deny the Petition under 35 U.S.C. § 325(d) because Hologic presented prior art arguments substantially similar to the rejections bioMérieux overcame in the prosecution of the ’262 patent.  Specifically, the Board concluded that although Sooknanan was not before the Examiner, Hologic relied on Sooknanan for the same teachings that the Examiner considered admitted and well-known during prosecution.  Additionally, the Examiner considered a version of Myers published in 1996 (“the 1996 Myers”) and not the 1995 Myers reference relied upon by Hologic.  Nevertheless, the Board found the two versions of Myers substantively the same because both versions provided identical sequences relevant to the claimed invention, and the prior art teachings bioMérieux overcame in the prosecution were as strong as, if not stronger than, that in the 1995 Myers reference.

A similar decision involving the same parties was issued on August 10, 2018, which was discussed in our blog post


Rimfrost AS v. Aker Biomarine Antarctic AS, No. PGR2018-00033 (Decision Entered August 29, 2018).

In this Petition, Rimfrost challenged U.S. Patent No. 9,644,170 (“the ’170 patent”) on (1) enablement and written description grounds; (2) subject matter eligibility grounds; (3) an anticipation ground based on a parent application of the ’170 patent that matured into U.S. Patent No. 9,034,338 (the ’388 Application); and (4) obviousness grounds based on Bruheim, Neptune’s GRAS, Sampalis, Randolph, and Bottino.  Aker filed a preliminary response to the Petition alleging that Rimfrost failed to establish that the ’170 patent contains or contained at least one claim with an effective filing date no earlier than March 16, 2013, as required to be eligible for a post grant review [America Invents Act, Sec. 3(n)(1)].  The Board agreed with Aker and denied the Petition.

The ’170 patent relates to encapsulated krill oil with specific lipid components.  Rimfrost alleged that claim limitations related to the amount of (1) ether phospholipids (3% to 15% w/w of sake krill oil), (2) astaxanthin esters (greater than about 100 mg/kg of krill oil), and (3) trimethylamine (less than 1 mg/kg of krill oil) failed to satisfy the enablement and written description requirements of 35 U.S.C. § 112(a) and were not supported by the prior filed applications.  The first two limitations were recited in the issued claims, and the third limitation was recited in the original claims.  The Board agreed with Aker that the specification of the ’170 patent provided specific disclosure of the limitations at issue and, therefore, the limitations satisfied the written description requirement.  Furthermore, the Board agreed with Aker and concluded that (1) the limitations related to ether phospholipids and astaxanthin esters were enabled because blending specific amounts of various lipid components to create a krill oil composition would be within the ability of a POSITA; and (2) a POSITA would know how to remove odor causing agents such as trimethylamine from krill oil at the time of the invention, based on the guidance provided in the specification and the Sampalis reference Aker relied on.  The ’170 patent is a continuation of the ’388 Application that was filed March 28, 2008.  Therefore, the Board concluded that Rimfrost failed to demonstrate that the ’170 patent contains or contained at least one claim that is not entitled to a priority date before of March 16, 2013.