IP Law Daily Evidence supported Board’s finding that claims of cell culture device patent were anticipated
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Monday, October 21, 2019

Evidence supported Board’s finding that claims of cell culture device patent were anticipated

By Cheryl Beise, J.D.

Board properly found that prior art patent disclosed the claimed "ambient gas" limitation and properly refused to apply judicial estoppel.

In an interference proceeding, the Patent Trial and Appeal Board’s conclusion that 45 claims of a patent directed to methods of using gas-permeable devices to culture animal cells were anticipated by a prior art patent was supported by substantial evidence, the U.S. Court of Appeals for the Federal Circuit has determined. The Board properly found that the cited patent disclosed the claimed "ambient gas" limitation. In affirming the Board’s anticipation decision, the court also found that the Board did not abuse its discretion in refusing to apply judicial estoppel based on allegedly inconsistent statements made during prior prosecution of a parent application to the challenger’s interfering application (Wilson v. Martin, October 21, 2019, Reyna, J.).

John R. Wilson is the listed inventor on U.S. Patent No. 8,809,044 (the ’044 patent), entitled "Highly Efficient Gas Permeable Devices and Methods for Culturing Cells." The ’044 patent, assigned to Wilson Wolf Manufacturing Corporation, is directed to methods of using gas-permeable devices to culture animal cells. The ’044 patent teaches that cells are generally cultured in the presence of oxygenated gas and a liquid culture medium that provides the cells with nutrients. The ’044 patent describes a cell culture device having multiple vertical shelves containing two or more culture compartments into which cells and a culture medium are placed.

In November 2015, Gregory Roger Martin requested an interference under 35 U.S.C. § 135(a) between the ’044 patent and U.S. Patent Application No. 14/814,267, entitled "Multilayered Cell Culture Apparatus" and published as U.S. Patent Application Publication No. 2015/0337252 on November 26, 2015 ("the ’267 application"). Martin, along with Allison Jean Tanner, are the inventors listed on the ’267 Application, filed by Corning Incorporated ("Corning"). The Board declared the interference on October 31, 2016. Claims 1–45 of the ’044 patent and claims 2–45 of the ’267 application correspond to the interference count. During the interference, Martin filed a motion with the Board, arguing that claims 1–5, 7–10, 12–14, 16–20, 22–23, 25–26, 28–30, 33–37, 39–42, and 44–45 of the ’044 patent are invalid as anticipated under 35 U.S.C. § 102(b) by U.S. Patent No. 6,759,245 ("Toner"), entitled "Cell Culture Systems and Methods for Organ Assist Devices." Toner is directed to systems and methods for culturing animal cells using modular cell culturing devices with gas-permeable membranes. The Board ultimately found that claims 1–45 of the ’044 patent invalid as anticipated or obvious.

On appeal, Wilson challenged both the Board’s conclusions regarding anticipation under 35 U.S.C. § 102(b) and its refusal to apply judicial estoppel.

Anticipation. Wilson’s sole argument concerning anticipation was that Toner does not disclose the "ambient gas" limitation because the oxygenated fluid in Toner must come from a physically connected gas tank. According to Wilson, "every embodiment described in Toner discloses the use of the opposite of ambient gas—gas from a gas tank that has a specific mixture, pressure, and flow rate that can be manipulated or con- trolled."

The Federal Circuit disagreed with Wilson. First, the Board’s findings that Toner discloses the "ambient gas" limitation were supported by Toner’s written description and figures. For example, Toner’s Figure 8a illustrates an embodiment of Toner’s invention without a connected gas tank. Further, Toner’s Figure 1, which does include a connected gas tank ("oxygenated fluid source 4"), teaches that the gas tank is only "preferabl[e]"—not required, as Wilson contended. Second, the testimony of Martin’s expert, Dr. Crespi, supported Toner does not contemplate an external gas tank as the only supply of the oxygenated fluid. The Board was entitled to weigh and credit that testimony. Although Toner’s disclosure of an embodiment that includes a gas tank may support a different conclusion than the one reached by the Board, "the relevant evidence is such that a reasonable mind might accept as adequate to support the Board’s conclusion," the Federal Circuit said.

The court also rejected Wilson’s contention that that Crespi's testimony was extrinsic evidence improperly used "to fill the gaps" in Toner. In addition, none of Dr. Crespi’s statements introduced elements or limitations claimed in the ’044 patent but missing from Toner. The claims of the ’044 patent do not require "a gas pump or fan" for circulation, "a large volume of gas space relative to the cell culture cartridges," or a "freestanding device," the court noted. "Thus, whether these elements are missing from Toner was irrelevant to the Board’s anticipation analysis."

Wilson next challenged the Board’s finding that the "air" disclosed in Toner is the same as "ambient gas" under either of the parties’ proposed constructions. This argument failed because it relied on the erroneous assumption that Toner requires the use of a gas tank. The Board’s finding also was supported by Dr. Crespi’s testimony. Wilson also contended that the air disclosed in Toner does not meet the "ambient gas" limitation under Martin’s proposed construction. However, this argument was misplaced because under Martin’s construction, there is no requirement that the air originates from the immediately surrounding environment, the court observed.

The Federal Circuit concluded that substantial evidence supported the Board’s final determination that Toner discloses the "ambient gas" limitation.

Judicial estoppel. Wilson argued that the Board abused its discretion by refusing to judicially estop Martin from arguing that Toner discloses the "ambient gas" limitation. Wilson contended that the judicial estoppel doctrine applied because during prior prosecution of a parent application to the ’267 application, Corning, the real party in interest behind Martin, made statements that allegedly are inconsistent with Martin’s position in this case.

The Federal Circuit disagreed for two reasons. First, Corning’s statements were made with respect to a different embodiment of Toner’s invention than the one on which the Board relied in this case. Specifically, the examiner rejected Corning’s prior application as anticipated by Toner’s Figure 8b—not Figure 8a. Second, Martin’s current position was not clearly inconsistent with Corning’s prior statements because those statements were made in a different context and were part of a different evidentiary record. In particular, the claims in Corning’s prior application were directed to structural components of the cell culture compartment, instead of cell culture conditions like the presence of "ambient gas." Finally, the examiner reviewing Corning’s prior application did not have the benefit of Dr. Crespi’s testimony. "We have previously refused to apply judicial estoppel in circumstances where the contexts surrounding a party’s allegedly inconsistent positions were markedly different," the court said.

In view of the markedly different contexts, the Federal Circuit concluded that the Board did not abuse its discretion by refusing to apply judicial estoppel.

This case is No. 18-1980.

Attorneys: Devan V. Padmanabhan (Padmanabhan & Dawson, PLLC) for John R. Wilson. Linda T. Coberly (Winston & Strawn LLP) for Gregory Roger Martin.

MainStory: TopStory Patent FedCirNews

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