In two recent PTAB decisions, Tissue Transplant Technology Ltd. & Human Biologics of Texas, Ltd., v. Mimedx Group, Inc., Case IPR2015-00420, Paper 25 (PTAB July 7, 2016) and Dexcowin Global, Inc., v. Aribex, Inc. Case IPR2016-00440, Paper 13 (PTAB July 7, 2016), the Board reached opposite conclusions regarding whether the petitioner’s prior art was analogous to the challenged patents.  It is well established that art is analogous when it is: (1) from the same field of endeavor as the claimed invention; or (2) reasonably pertinent to the particular problem faced by the inventor, if the art is not from the same field of endeavor. In re Bigio, 381 F.3d 1320, 1325-1326 (Fed. Cir. 2004). However, as these two decisions demonstrate, overcoming a non-analogous art challenge depends on how the petitioner characterizes the problem to be solved by the challenged claims and whether the petitioner can point to some area of overlap in the fields of endeavor of the prior art reference and the patented invention.

In Tissue Transplant, the challenged claims of U.S. Patent No. 8,597,687 related to placental membrane tissue grafts and the use of “an asymmetric label” to permit visual determination of the orientation of a tissue graft. The Board found the challenged claims of the ’687 patent to be unpatentable over the combination of a prior art reference teaching placing a mark on lens implants to ensure proper orientation (Nigram) and a reference that taught the preparation of grafts from placental tissue (Hariri).

The Patent Owner argued that Nigam was not analogous art because it was directed to synthetic corneal lens which are “both chemically and structurally distinct” from the placental issue grafts of the challenged claims. The Patent Owner characterized the problem solved by its patent as one of “manufacturing placental tissue grafts that incorporated labeling of the graft.” Nigam, Patent Owner asserted, did not address this problem because it did not use placental tissue grafts.

The Petitioner on the other hand characterized the problem to be solved by the ’687 patent as the labeling of a tissue graft and asserted that Nigam teaches “methods for distinguishing between two sides of a tissue graft or implant” through labeling. The Board agreed. It reasoned that although the implants of Nigam were generally made of various types of synthetic materials, they could also include tissue implants. “Thus, Nigam ‘logically would have commended itself to an inventor’s attention in considering his problem,’ which in the case of the challenged claims, is differentiating the two sides of a tissue graft.” Tissue Transplant at 20.

In Dexcowin, the challenged claims of U.S. Patent No. 7,224,769 were directed to portable x-ray devices having detection means not structurally attached to the x-ray device. The Petitioner argued that a prior art Chinese patent taught all limitations of the challenged claims except for the limitation that the detecting means be structurally unattached to the housing.  For this element, the Petitioner relied on teachings in a prior art patent to Kobayashi describing a portable x-ray device used in dentistry having separate x-ray generator and x-ray detector.

Although the Board in Dexcowin did not expressly refer to whether the cited art was “analogous,” its decision not to institute IPR appears to be based on a conclusion that one of the references was not analogous to the challenged claims. In particular, the Board concluded that because the portable x-ray device disclosed in the Chinese patent was not used in dentistry, it would not have been obvious to a person of ordinary skill in that art to adopt the unattached x-ray detection means of Kobayashi. Dexcowin at 17. The Board concluded that “Petitioner does not direct us to, nor do we find, disclosure in Yu [the Chinese patent] is used in dentistry.” Furthermore, the Board found the Chinese patent describes its x-ray device as being “packaged whole by a plastic shell” to provide better image quality, therefore giving a reason for having the x–ray detection means that is structurally attached to the housing.

Unlike in Tissue Transplant, the petitioner in Dexcowin did not articulate the problems to be solved by the challenged claims and therefore, left it up to the Board to frame the problem narrowly as improving portable x-ray devices used in the dentistry field with art from outside that field. Further, the petitioner in Dexcowin also did not provide the Board with any evidence to show overlap between the fields of endeavor reflected in the Chinese patent and Kobayashi.

To paraphrase Dickens, it was the best of art, it was the worst of art. Unable to overcome a non-analogous art challenge, even the best art becomes useless. As these two decisions demonstrate, when a petitioner can frame the problem to be solved by the challenged claims in such a way that one can then point to some area of overlap in the fields of endeavor of the prior art, the PTAB is more likely to find the art to be analogous.