During the week of October 22, 2018, the Patent Trial and Appeal Board (“the Board”) issued one decision in TC 1600 denying institution of inter partes review.  A summary of the decision follows:

Merial, Inc. (“Merial”) v. Intervet Int’l B.V. (“Intervet”), IPR2018-00919 (Decision Denying Institution Entered October 22, 2018).

In its petition, Merial challenged claims 1-8 of U.S. Patent No. 8,008,001 (“the ’001 patent”), which is directed methods of protecting piglets against porcine circovirus type 2 (“PCV-2”) by administering a vaccine that elicits a protective immune response.

Merial challenged the claims as obvious based on references by Jestin, Pinelli-Saavedra, Rijke, Blanchard, and Meng, alone or in several combinations.  In its preliminary response, Intervet argued that Merial failed to raise any argument that was not considered and overcome during prosecution.  The Board exercised its discretion under 35 U.S.C. § 325(d) to determine whether to institute inter partes review based on its determination of whether the same or substantially the same prior art or arguments had already been presented to and considered by the Office during prosecution.  In evaluating the prior art and arguments, the Board considered several non-exclusive factors, including:

(a) the similarities and material differences between the asserted art and the prior art involved during examination;

(b) the cumulative nature of the asserted art and the prior art evaluated during examination;

(c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection;

(d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguished the prior art;

(e) whether Petitioner has pointed out sufficiently how the Examiner erred in its consideration of the asserted prior art; and

(f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the asserted prior art or arguments.

IPR2018-00919, Paper 13, at 12 (citing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, slip op. at 17–18 (Paper 8) (PTAB Dec. 15, 2017) (informative)).  On balance, the Board found the factors to weigh in favor of Intervet.  As such, the Board exercised its discretion under § 325(d) and denied institution of inter partes review.