The PTAB’s final written decision in Butamax Advanced Biofuels LLC v. Gevo, Inc. Case IPR2013-00539, Paper 33 (P.T.A.B. 2015), illustrates the importance of providing more than attorney argument to show that claims have written description support in a provisional application. 

Butamax filed a petition for IPR of claims 1-19 of U.S. Patent No. 8,273,565 owned by Gevo, Inc.  The ’565 patent, directed to recombinant yeast microorganisms with increased activity of dihydroxy acid dehydratase, issued from an application that claimed priority to two provisional applications—U.S. Provisional Application No. 61/350,209, filed June 1, 2010, and U.S. Provisional Application No. 61/263,952, filed November 24, 2009.

The PTAB instituted an IPR of claims of the ’565 patent on various grounds, including unpatentability under 35 U.S.C. § 102(e) based on a single reference (the Flint reference) and unpatentability under 35 U.S.C. § 103(a) based on multiple prior art references.  The PTAB did not institute an IPR of claim 10, finding that the Petitioner did not show a reasonable expectation of success in inactivating endogenous glycerol-3-phosphate dehydrogenase (GPD) (the subject matter of claim 10) or any reason why one of ordinary skill would have deleted GPD based on the prior art or otherwise.

The Flint reference is a publication of an international (PCT) application claiming priority to a U.S. provisional application filed on February 17, 2010.  Thus, Flint would be prior art to the ’565 patent under § 102(e) unless the ’565 patent is entitled to the benefit of the 2009 filing date of the ’952 provisional application.

The Petitioner argued that the ’565 patent was not entitled to the benefit of the provisional applications because neither contains written description support for the subject matter recited in claim 1.  In support, the Petitioner provided expert testimony concerning how a person having ordinary skill in the art would have understood the disclosures of the provisional applications.  In response, the Patent Owner pointed to disclosures in the provisional applications, and argued that one of ordinary skill would have been familiar with the relevant technology and that it is not necessary to disclose what was well known in the art.  The Patent Owner did not, however, support these positions with expert testimony and did not cross-examine the Petitioner’s expert witness.

The PTAB was convinced by the Petitioner’s “comprehensive and persuasive expert testimony and supporting analysis,” and concluded that the provisionals do not provide written description support for claim 1.  In doing so, the PTAB stated that the “Patent Owner has presented no evidence—only attorney argument—regarding what one of ordinary skill in the art would have known and understood the disclosures to convey at the time of filing” and that the “attorney argument does not refute Petitioner’s detailed showing, with evidentiary support.”  The PTAB also noted that the Patent Owner did not put forward the testimony of any expert or anyone of ordinary skill in the art, did not cross-examine the Petitioner’s expert, and did not submit any relevant prior art references.  Thus, the PTAB concluded that Flint was prior art to the ’565 patent under § 102(e).

Having found that Flint was prior art under § 102(e), the PTAB went on to analyze the disclosure of Flint as well as the provisional to which it claimed priority.  The PTAB concluded that the disclosure of Flint (and the provisional application to which it claimed priority) anticipated claims 1-4, 6-8, and 11-19 of the ’565 patent. The PTAB also analyzed the instituted obviousness grounds, and concluded that claims 1-9, 11, 13, 14, and 16-19 were obvious over the cited prior art.

This Decision illustrates that petitioners and patent owners alike would be well advised to rely on expert testimony, cross-examination, and any other available evidence when analyzing written description support for claims.