Will The Real "Another" Please Stand Up?

• Published date: 20 October 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Amanda Murphy, Melanie Magdun, Hira Javed and Stacy Lewis

Holding:

In Thorne Research, Inc. v. Trustees of Dartmouth College, IPR2021-00491, Paper 48 (P.T.A.B. Aug. 10, 2022), the challenged claims of U.S. Pat. No. 8,197,807 ("the '807 patent") survived. The Patent Trial and Appeal Board ("the Board") issued a Final Written Decision ("FWD") holding no challenged claims unpatentable.

Background:

Thorne filed a petition for inter partes review ("IPR") and challenged claims 1-3 of the '807 patent as unpatentable for being anticipated and obvious. Thorne relied upon a Cell article for the obviousness ground and a PCT Publication for the anticipation ground. The Cell article was published on May 14, 2004, and the PCT Publication occurred on August 25, 2005, but the PCT claimed priority to a provisional application filed February 10, 2004. The diagram below depicts the timing of these events relative to the alleged effective filing date and actual filing date of the '807 patent.

Patent Owner argued that the Cell article and PCT Publication were not prior art to the '807 patent. Id. at *9. According to the Patent Owner, the '807 patent was entitled to an effective filing date of April 25, 2005, via a claim to priority under 35 U.S.C. '120 to the April 25, 2005, filing date of U.S. Application No. 11/113,701 ("the '701 application"). Based on this effective filing date, Patent Owner argued the Cell article was not prior art under 35 U.S.C. ' 102(b), and that the cited references only qualified as prior art under 35 U.S.C. '102(a) or 102(e). Patent Owner also argued that none of the asserted references were "by another," as required by 35 U.S.C. '102(a) or ' 102(e), and therefore cannot be prior art to the '807 patent. Id.¹

Petitioner argued that the '807 patent was only entitled to an effective filing date of April 20, 2006, which was the actual filing date of the application that led to the '807 patent. Id. at *9-10. Therefore, the Cell article was available as prior art under 35 U.S.C. '102(b) because its publication date of May 14, 2004, was more than one year before April 20, 2006. Id. at *9. Petitioner also argued the PCT Publication was prior art either under 35 U.S.C. '102(a), based on its August 25, 2005, publication date or under 35 U.S.C. ' 102(e), based on its February 10, 2004 provisional application filing date. Id.; see also Petition at 34-35 n. 12.

Board: The Board found the specification of the '807 patent clearly claimed priority back to the '701 application and the '807 patent was entitled to an...