Wilsonv.Martin et al.

Patent Trial and Appeal Board

Dec 27, 2017

14814267 (P.T.A.B. Dec. 27, 2017)

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BoxInterferences@uspto.gov Filed: March 15, 2018
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

JOHN R. WILSON,
Junior Party
(Patent 8,809,044)

v.

GREGORY ROGER MARTIN,
and
ALLISON JEAN TANNER,
Senior Party
(Application 14/814,267).

Patent Interference No. 106,060
(Technology Center 1600)

Before SALLY GARDNER LANE, JAMES T. MOORE,1 and DEBORAH KATZ,
Administrative Patent Judges.

LANE, Administrative Patent Judge.

DECISION ON REHEARING - Bd. R. 125(c)

1 Judge Richard E. Schafer was on the original merits panel (“the prior
panel”). Judge Schafer has since retired from the Board.

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I. Introduction 1
In the Decision on Motions, the prior panel granted Martin Motion 3 2
asserting unpatentability of all the Wilson involved claims on the basis of prior art 3
under 35 USC §102(b) 2 or 103. (Decision, Paper 167, 25). As Martin did not 4
rebut the presumption that Martin’s claims also are unpatentable over this same 5
prior art the prior panel determined that all the claims of both parties are 6
unpatentable. (Decision, Paper 167, 22:23-23:4, citing Bd. R. 207(c)). 7
Wilson now seeks rehearing of the Decision. (Request, Paper 169). Martin 8
opposes.3 (Martin Opposition 3, Paper 171). 9
We have considered the arguments raised in Wilson’s Request but we do not 10
modify the prior panel’s Decision. 11
12
II. Legal Principles 13
The burden of showing a decision should be modified lies with the party 14
attacking the decision. A request for rehearing must specifically identify all matters 15
the party believes to have been misapprehended or overlooked and the place where 16
the matter was previously addressed in a motion, opposition, or reply. Bd. R. 17
125(c) (3). 18
19

2 Any reference to a statute in this Judgment is to the statute that was in effect
on March 15, 2013 unless otherwise indicated. See Pub. L. 112-29, § 3(n), 125
Stat. 284, 293 (2011).

3 Wilson sought, via email communication to the Board, authorization to file a
reply. We do not find a reply to be necessary here and do not exercise our
discretion to authorize one. Bd.R. 125(c) (4).

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III. Discussion 1
Wilson argues that we were incorrect in finding Toner to teach incubating 2
with ambient gas as required by the Wilson involved claims. Wilson argues there 3
is no disclosure in Toner that would allow for the entry of surrounding air into the 4
cell culturing device. (Request, Paper 169, 2:12-19). Instead, argues Wilson, 5
Toner requires a physically connected source such as an air tank for incubating the 6
bioreactor. The air from such a tank, Wilson asserts, is not ambient gas. (Request, 7
Paper 169, 1:17-2-1; 4:5-6:2). Further Wilson argues that the vents disclosed by 8
Toner and discussed in the Decision only allow oxygenated fluid (gas) within the 9
bioreactor to exit and do not allow surrounding gas to enter in contrast to 10
indications in Dr. Crespi’s testimony on this point. (Request, Paper 169, 2:1-7 and 11
6:11-8:20 referring to Decision, Paper 167, 15:17-17:22). 12
We are not convinced that the prior panel misapprehended the teachings of 13
Toner as Wilson argues for reasons discussed below. 14
15
Ambient gas limitation 16
In its Opposition 3, Wilson argued that Toner does not show the “ambient 17
gas” limitation of its claims. (Wilson Opposition 3, Paper 109, 1:14-19). Wilson 18
did not argue that any other limitation is lacking in Toner. To the extent Wilson is 19
now arguing that other limitations of its claims are not met by Toner we have not 20
considered those arguments as we could not have overlooked or misapprehended 21
arguments not made. Bd. R. 125(c) (3). 22
The portion of Wilson claim 1 that contains the “ambient gas” limitation is 23
shown below: 24

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whereby said apparatus is incubated in the presence of ambient 1
gas suitable for animal cell culture, oriented in a position such that 2
said culture compartments are located one above the other, each said 3
shelf is in a horizontal position with said gas space located below it, 4
animal cells reside upon at least a portion of each said shelf, said 5
culture compartments include media in contact with said shelf and 6
said opposing surface, and ambient gas resides within each said gas 7
space and is in contact with each shelf. 8
9
(Wilson clean copy of claims, Paper 6, emphasis added). 10
In the Decision the prior panel noted that it gave the ambient gas limitation 11
its broadest reasonable interpretation in light of the Wilson involved specification 12
as would be understood by one of ordinary skill in the art without importing 13
limitations from the specification into the claims. (Decision, 8:7-19, citing In re 14
Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983), In re Van Geuns, 988 F.2d 1181, 15
1186 (Fed. Cir. 1993) and Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 16
1375 (Fed. Cir. 2009)). The prior panel found that Toner teaches the “ambient 17
gas” limitation when we give the term such a construction. 18
In particular, the prior panel found that “[t]he device at Toner figure 8a 19
shows multiple ports which communicate between the interior and exterior of the 20
device and from which an oxygenated fluid which is typically a gas and may be 21
‘air’, passes into the compartment containing the gas spaces” and that this 22
oxygenated fluid is “ambient gas”. (Decision, Paper 167, 15:4-17, citing Toner, 23
Ex. 1012, 8:1-9, 17:1, 19:52-53). 24
25

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Requirement for physical connection to gas source 1
In the Request Wilson again argues that Toner discloses that its bioreactor 2
must be connected to a gas tank, i.e., where gas is forced or pumped into the 3
device. (Request, Paper 169, 2:20-6:7). In the Decision the prior panel found that 4
“[t]o the extent the Wilson claims exclude pumped or forced air, we do not see 5
where Toner requires that the gas be pumped or forced into the device.” (Decision, 6
Paper 167, 15:11-12). The prior panel credited Dr. Crespi’s testimony that Toner 7
allows for static flow of the oxygenated fluid and that this static flow embodiment 8
results in a device having the “ambient gas” limitation of the Wilson claims as 9
shown in Figure 8A. (Decision, Paper 167, 15:14-16:2, citing Second Crespi 10
Declaration, Ex. 1011, ¶¶ 74, 76, 90 referring to, e.g., Toner, Ex. 1012, 17:1,19:52-11
53). 12
We have reviewed that portion of Dr. Crespi’s deposition testimony said to 13
support Wilson’s position. (Request, Paper 169, 3:18-21 citing Crespi Deposition, 14
Ex. 2011, 91:20-92:3).4 We do not see where this testimony contradicts Dr. 15

4 The cited testimony, including Dr. Crespi’s complete answer (not all of
which is included in the citation to the testimony found in the Request) is as
follows:

Q. Figure 8 -- let me start over. Figure 8A depicts one embodiment of a
bioreactor labeled one; it does not purport to depict a schematic for the system in
which it is used?

MR. GOLDMAN: Objection.

A. I would say yes, that's true; for example, adding or removing a media
is not shown. On the other hand, it does state that media can be static,
there are examples of using media in a static state, so probably more true
than false.

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Crespi’s declaration testimony or otherwise shows that Toner as a whole does not 1
allow for static air flow or requires physical connection to a gas tank. Instead Dr. 2
Crespi testified in that deposition that one skilled in the art would have recognized 3
that the device of Figure 8A of Toner could be used as a freestanding device and 4
would not have required the gas tank found in the Figure 1 configuration of Toner. 5
(Crespi Deposition, Ex. 2011, 95:14-96:2). 6
Wilson’s arguments that Toner requires physical connection to a gas tank are 7
not supported by sufficient evidence to convince us that we misapprehended Toner. 8
While we agree that Toner provides examples, such as that shown at Figure 1, that 9
use a tank as a source of gas, Wilson has not directed to us to evidence sufficient to 10
show that one skilled in the art would have understood Toner to require a gas tank 11
in all disclosed embodiments. (See Request, Paper 169, fn. 1 referring to Toner, 12
Ex. 1012, example 1, 24:46-51). 13
We reaffirm the credit the prior panel gave the testimony of Dr. Crespi 14
indicating that Toner discloses embodiments where a gas tank is not required. The 15
conclusory statements made by Wilson in the Request amount to attorney 16
argument which cannot take the place of evidence lacking in the record. Estee 17
Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). 18
19
Air vents in Toner 20
In the Decision the prior panel credited Dr. Crespi’s testimony that Toner 21
discloses the addition of other ports (i.e., other than ports illustrated in Figure 8A) 22
for venting gas and the use of static gas flow indicating “that the common gas 23
space inside the device is open to the ambient environment for venting air or the 24

(Crespi Deposition, Ex. 2011, 91:20-92:7).

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mixture of air with other gases supplied into the gas space via the inlet.” (Second 1
Crespi Declaration, Ex. 1011, ¶ 90 referring to Toner, Ex. 1012, 19:52-53). Thus 2
the Decision found that even if a gas tank is used these other ports would provide 3
for ambient gas to be present and to reside within each said gas space and to be in 4
contact with each shelf. (Decision, Paper 167, 15:17-16:2). 5
In its Request Wilson argues that these other ports allow gas to exit from, 6
but not enter into, the device. (Request, Paper 169, 6:15-8:19). We do not see that 7
even if this is the case it would prohibit ambient gas from residing within each gas 8
space and being in contact with each shelf. Wilson does not direct us to a 9
requirement in the claims that ambient gas must move from the exterior of the 10
device to the interior of the device (or vice versa). 11
We are not persuaded that the prior panel misapprehended Toner’s teachings 12
or Dr. Crespi’s testimony. 13
14
Judicial Estoppel 15
In the Decision the prior panel considered Wilson’s arguments regarding 16
judicial estoppel but did not find them convincing. In particular the prior panel 17
reviewed Martin’s response to the rejection of its claims in a related application 18
over Toner but did not see where Martin argued that Toner did not disclose the use 19
of ambient gas of the Wilson claims (as Wilson urged in its Opposition 3). The 20
panel agreed that Martin refers to Toner as showing a closed oxygen chamber. The 21
prior panel also agreed that Martin acknowledged that Toner allowed for the flow 22
of oxygenated fluids. We did not see the Martin response to be an admission by 23
Martin that Toner does not disclose the “ambient gas” limitations of the Wilson 24
claims. The Decision noted that the issue was decided on a different record than 25

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was before the Examiner, including, inter alia, testimonial evidence from Dr. 1
Crespi and Mr. Wilson. The Decision also noted that it is not clear that the related 2
Martin claims that were rejected over Toner are of are sufficiently similar scope to 3
the involved Wilson claims such that previous arguments of Martin are necessarily 4
conflicting with Martin’s current position. (Decision, Paper 167, 17:16-19:7). 5
Wilson argues that the prior panel misapprehended its arguments regarding 6
judicial estoppel. The Request presents essentially the same arguments as were 7
made in Wilson Opposition 3. (Request, Paper 169, 11:6-12:2). Nonetheless we 8
have reconsidered these arguments as made in the Request but are not persuaded 9
that we misapprehended or overlooked any matters that would cause us to modify 10
the Decision. 11
12
IV. Conclusion 13
Wilson has not met its burden of showing that the Decision should be 14
modified. Bd. R. 125(c) (3). 15
16
V. Order 17
It is 18
ORDERED that we have considered the Wilson Request but do not 19
modify our Decision. 20

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cc (via email):

Attorney for Wilson:

Devan V. Padmanabhan
Nathan J. Witzany
Brett A. Klein
Sri K. Sankaran
WINTHROP & WEINSTINE, P.A.
dpadmanabhan@winthrop.com
nwitzany@winthrop.com
bklein@winthrop.com
ssankaran@winthrop.com

Attorney for Martin:

Michael L. Goldman
Edwin V. Merkel
LECLAIRRYAN
Michael.Goldman@leclairryan.com
Edwin.Merkel@leclairryan.com