During the week of March 4, 2019, the Patent Trial and Appeal Board (“the Board”) issued two decisions in TC 1600.  One decision denied institution of a petition, and one decision was a final decision finding all claims unpatentable.

Luitpold Pharm., Inc. v. Apicore US LLC, IPR2018-01640 (Decision Denying Institution Entered March 6, 2019): In Luitpold, Petitioner Luitpold challenged all claims of a patent on preparing substantially pure formulations of isosulfan blue dye, which is used in applications such as cancer diagnostics.  The Board denied Luitpold’s bid to institute an IPR, partly relying on similar reasoning from a concurrent district court proceeding.

The claims were generally directed to isosulfan blue compounds having a purity of at least 99.0% by HPLC.  Decision Denying Institution at 6.  In the first two of four obviousness combinations, the Petition utilized obviousness references claiming isosulfan blue purity around 86% and argued that the POSA would have been able to reach the claimed 99% purity by routine skill and other references’ disclosures, but the Board rejected this reasoning.  First, the Board found the statements in a supporting declaration insufficient to conclude that the described level of purity was reached every time, let alone that the claimed high level of purity could be reached at the priority date through ordinary skill.  Id. at 22–26.  Further, even though the Petitioner included one obviousness reference that technically reached the claimed purity level, that reference only reached that purity level through an “exhaustive purification process” that the Board found was not in the POSA’s conventional skill set.  Id. at 25.  The Board’s reasoning on Petitioner’s second set of obviousness combinations was similar, with the same result, given that the Petitioner used a similar primary reference that would still require further purification to reach the claimed 99% isosulfan blue purity.  See id. at 27–29.

UPL Ltd. v. Agrofresh Inc., IPR2017-01919 (Final Decision Finding All Claims Unpatentable): In UPL, Petitioner UPL succeeded in proving all claims unpatentable by a preponderance of the evidence.  The patent at issue claimed “metal coordination polymer networks” (MCPNs) for storing volatile 1-methylcyclopropene complexes, which are useful in extending harvested plants’ shelf life.  Final Written Decision at 4–5.  Specifically, the patent claimed that MCPNs, unlike previous methods for storing 1-methylcyclopropene, allowed the volatile compound to adsorb into the polymer network until it was ready to be released (by contacting with water, etc.).  Id.

After rejecting Patent Owner’s bids to narrow the Institution Decision’s preliminary claim constructions (see id. at 10–18), the Board agreed with Petitioner that all claims were either anticipated by or obvious over the references in Petitioner’s first and second grounds, not reaching Petitioner’s third and fourth grounds that alleged similar anticipation and obviousness arguments.  Id. at 23–49.  Specifically, the Board found that Petitioner’s ground 1 anticipation reference disclosed all elements of the claimed MCPN complexes of claims 1–5 and 21 (id. at 23–33), and two other references combined with Petitioner’s anticipation reference rendered obvious the remaining claims, which were directed to a kit and methods of releasing the 1-methylcyclopropene from the kit.  Id. at 33–48.