Holding: In Trans Ova Genetics, L.C. v. XY, LLC, No. 2019-2312 (Fed. Cir. Sept. 8, 2020), the U.S. Court of Appeals for the Federal Circuit (Judges Reyna, Clevenger, and Chen) issued a Rule 36 affirmance of the Patent Trial and Appeal Board’s (the PTAB’s) final written decision (FWD) that Trans Ova failed to establish that a Lu article qualifies as prior art.
Background: Trans Ova Genetics, LC (Trans Ova) filed a petition requesting an inter partes review (IPR) of claims 1-16 of U.S. Patent No. 8,652,769 (“the ‘759 patent”) owned by XY, LLC (XY). The ’769 patent relates to a method of producing a frozen-thawed sorted artificial insemination sample. The IPR was subsequently instituted. See Final Written Decision, IPR2018-00250, Paper 35, at 2 (P.T.A.B. June 26, 2019).
Trans Ova asserted five different grounds to challenge ’769 patent’s patentability under 35 USC §103 (a). All the grounds cited Lu, a journal article published in a 1999 volume of the journal Theriogenology. Id. at 6. Because all five grounds relied upon the Lu article, the case turned on whether the Lu article qualified as prior art. Id.
The Lu article identifies Lu, Cran and Seidel as authors and further acknowledges that “D. Green (Cogent, UK) gave permission to cite unpublished work.” Id. at 7. Green’s work is reflected in Table 3 of the Lu article, which reports data regarding the claimed stain concentration. (Table 3 is reproduced below with highlighting added). Id.
See Table 3 of Lu.
The challenged ’769 patent includes data copied directly from the Lu article. Id. at 8. The data in Table 3 of the Lu article are identical to the data included in Table 1 of the ’769 patent. Id. But there is no acknowledgement of “Green et al.” in Table 1 of the ‘769 patent. The ’769 patent lists Lu, Cran, Seidel and Suh as co-inventors, but not Green. Id. at 7-8.
The Lu article identifies “D. Green” as being associated with “Cogent, UK,” a bull stud, where “they collect semen from those animals and then sell the semen or use it to inseminate other female bovine animals.” Id. at 9. From the late 1990s to 2000s, patent owner XY had a collaborative research agreement with Cogent. Id.
Craig Miles was a prosecution attorney of the ’769 patent and also served on the XY Board. Id. at 9, 23. Miles “handled the licensing agreement between XY and Cogent and was responsible to assess the performance of parties and receive information about the performance of the parties under those agreements.” Id. at 10.
During his deposition, Miles testified that Green was a “bench technician” at Cogent. Id. at 11. In particular, he testified that “when I refer to a bench technician, I am referring to an individual who, basically, is employed to come in and to actually physically perform the experiments that are conceived of or provided to him per ─ by the supervisory research investigator.” Id. In other words, Miles identified Green as basically a pair of hands.
Miles testified that when drafting the patent application maturing into the ‘769 patent, he copied the data from Lu article Table 3 and pasted them into Table 1 of the application that resulted in the ’769 patent. Id. at 12. As noted above, Miles deleted the phrase, “Green et al. unpublished” from the caption of Table 3 of the Lu article when he prepared the application because he did not believe the data were properly attributable to Green. Id. at 12-13.
“An inventor’s own work is not prior art under § 102(a).” Id. at 14. And in determining whether an article, such as the Lu article, is the work of the named inventors, “the inquiry focused on whether the relevant content of the reference ─ which includes ‘the design, trial, and analysis of the result’ ─ was solely the work of the inventors.” Id.
The PTAB made it clear that Petitioner bears the burden to demonstrate, by preponderance of the evidence, that the challenged claims are unpatentable. Id. This burden necessarily includes the burden to establish that an article relied on, such as Lu, qualifies as prior art. Id.
Petitioner, Trans Ova, contended that it met its burden to show that the Lu article qualifies as prior art because it is not the work of a common inventive entity to the ’769 patent. Id. Trans Ova relied on the fact that the Lu article attributes Table 3 to “Green.” In fact, the Lu article states that “D. Green (Cogent, UK) gave permission to cite unpublished work.” Trans Ova urged that Green’s permission would have been unnecessary if the cited work was that of the named inventors alone. Id. at 14-15.
The PTAB agreed that Green made material contributions to Table 3 of the Lu article. Id. at 15. However, this evidence must be balanced against evidence identified by XY that suggests that Green’s contribution to Table 3 did not rise to the level required to consider the data recited in Table 3 to be the “work of another.” Id. The PTAB pointed out that Green was not a named author of the Lu article. Id. at 17. According to the PTAB, the fact that Green gave “permission” to use the data recited in Table 3, even though he was not named as an author, suggests that Green did not consider himself to be an author of the Lu article. Id.
The PTAB was also persuaded by XY’s “contemporaneous decision - made at a time when the evidence was relatively fresh - not to name Green as an inventor.” Id. at 19. Miles was aware of the Lu article and had formed an understanding of Green’s contribution to Table 3. Id. at 16. As noted above, Miles testified that Green was merely a lab technician. Id. at 12. The PTAB specifically determined that Miles’s testimony was not hearsay because this testimony was based on not only Miles’s conversation with Cran but also Miles’s familiarity with Cogent’s activities and the way that the Cogent business was structured. Id. at 11-12.
Based on the evidence, the PTAB concluded 2-1 that Trans Ova failed to carry its burden to prove that the work described in the Lu article was, relative to the inventive entity named in the ‘769 patent, the work of another. Id. at 20.
One judge of the PTAB panel filed a separate opinion concurring only in the result of the FWD and noting her dissent from the Institution Decision. Her objection was that the issue in the Institution Decision and FWD was not in the petition. That is, “whether Mr. Green is an unattributed coauthor of the Lu reference… appears nowhere in any paper filed prior to trial institution. Further, we expressly denied Petitioner’s request to introduce that issue into the proceeding at the pre-trial stage. … We also, thereby, cut off any opportunity for Patent Owner to addressthe issue before trial institution.” Dissent, at 1. The judge continued:
Patent Owner endured the burden and expense of a year-long trial (which included navigating the unavailability of a material witness; Dr. Cran, deceased) to successfully refute a factual proposition introduced, not by either party in a pre-trial filing, but by the Board in the Institution Decision.
Id. at 2.
On September 4, 2020, the Federal Circuit heard oral arguments from both parties.
Counsel for Trans Ova argued that the issue “centers on whether non-inventor David Green made an inventive contribution to Lu Table 3.” Oral hearing tape, http://oralarguments.cafc.uscourts.gov/Audiomp3/19-2312_09042020.mp3. Trans Ova contended that Miles copied the Table 3 data of the Lu article into the application without attribution, erased Green’s name from Table 3, and deliberately omitted Green as an inventor. Id.
When Trans Ova’s Counsel argued that Miles’s testimony regarding Green’s role should be excluded, Judge Chen responded that “there was some ambiguity there as to just exactly what it is that Green did as it relates to that Table. I mean there’s a lot of different ways to read it.” Id. Judge Chen continued: “So, the problem is we do not have Green here. And so, how do we deal with this ambiguity? . . . How can we say with any confidence that the Board got it wrong with its finding?” Id.
When counsel for Trans Ova continued arguing about Miles’s knowledge about Cogent in its relationship with XY, Judge Clevenger commented, “[w]hy is that relevant? This is a very interesting case to me because neither side really wanted to know what Green did.” Id.
Judge Clevenger stated that “Cogent is very available” and that “Cogent obviously knows what Green did or didn’t do and either one of you could have gone to Cogent and asked if you couldn’t find what did Green do.” Id. Judge Clevenger continued that "[i]t is one of those classic questions in litigation where there is a question you ask and if you get the wrong answer you lose and so, both sides decide not to ask the question and instead to live with the consequences of circumstantial evidence that sort of grows around the subject.” Id.
When Counsel for Trans Ova answered that they did not think they needed to contact Green, Judge Clevenger responded that “so instead you rely on the circumstantial evidence. And as I understand the quality argument today there’s argument on both sides of the case. It is a close case. So, the question is under the standard of review it is — you lose. That is as simple as I can say it.” Id.
Only four days after the oral argument, the Federal Circuit affirmed the PTAB’s decision under the Rule 36.
According to the Court, Trans Ova, the petitioner, failed to prove that the Lu article was the work of another, by hiding its head in sand. That was fatal because as Petitioner, Trans Ova had the burden to prove that the Lu article was the work of another and thus prior art.
This case shows that a party before the PTAB bearing the burden of proof should think long and hard about a need to discover the truth rather than relying on circumstantial evidence, especially when the case is close, as Judge Clevenger suggested was the case in Trans Ova.
Additionally, in assessing inventorship and whether in fact the Lu article was the work of another, the PTAB focused on stated authorship of the Lu article. Therefore, when a patent application is prepared based, at least in part, on a published article, the patent attorney/agent will want to consider whether everyone named on the article is also a co-inventor. That consideration is complicated by the fact that co-inventorship can be a rather murky concept. In fact, consider the following quote from a court:
The exact parameters of what constitutes joint inventorship are quite difficult to define. It is one of the muddiest concepts in the muddy metaphysics of the patent law.” Mueller Brass Co. v. Reading Industries, Inc., 352 F.Supp. 1357, 1372 (E.D.Pa. 1972).
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