Intl Flavors & Fragrances Inc v. US DePartMent Of AgRICulture

1. Case Identification

• Patent #: 7,579,016
• Petitioner(s): International Flavors & Fragrances Inc.
• Patent Owner(s): The United States of America as represented by the Secretary of Agriculture
• Challenged Claims: 1, 4-5, 7-8, and 14-26

2. Patent Overview

• Title: Methods for Repelling Arthropods Using Isolongifolenone Analogs
• Brief Description: The ’016 patent is directed to methods for repelling arthropods, such as mosquitoes and ticks. The methods involve treating an object or area with an arthropod-repelling effective amount of at least one isolongifolenone analog, which may be combined with a carrier material.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 4-5, 7-8, 14, 19-21, and 23 under 35 U.S.C. §102

• Prior Art Relied Upon: Behan (WO 2000/019822).
• Core Argument:
  • Prior Art Mapping: Petitioner argued that Behan, a PCT application published more than one year before the ’016 patent’s earliest filing date, discloses every element of the challenged claims. Behan describes a method for repelling insects from an object or airspace by applying an effective amount of a perfume ingredient. Critically, Behan explicitly identifies 2,2,7,7-tetramethyltricyclo[6.2.1.0^1,6]undecan-5-one, also known as isolongifolanone, as an effective insect repellent. This compound is an isolongifolenone analog falling within the scope of the formula recited in independent claim 1 of the ’016 patent. Behan also discloses optional carriers and lists target arthropods, such as mosquitoes of the genus Aedes, which anticipates the species limitations of dependent claims 19, 21, and 23.

Ground 2: Obviousness of Claims 1, 4-5, 7-8, and 14-23 over Behan in view of Grieco

• Prior Art Relied Upon: Behan (WO 2000/019822) and Grieco (a 2005 journal article titled "A Novel High-Throughput Screening System to Evaluate the Behavioral Response of Adult Mosquitoes to Chemicals").
• Core Argument:
  • Prior Art Mapping: Petitioner asserted that Behan teaches the foundational method of using isolongifolanone as an arthropod repellent. The dependent claims 15-18 of the ’016 patent recite specific concentration ranges for the repellent (e.g., 10 to 300 nmol/cm²). Grieco, which describes a system for evaluating insect repellents, was cited to demonstrate that determining an optimal concentration is a routine and predictable activity. Grieco teaches using concentrations of 25 and 250 nmol/cm² to test repellents against Aedes aegypti, amounts that fall squarely within the ranges claimed in the ’016 patent.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA), knowing from Behan that isolongifolanone is a repellent, would be motivated to use the routine optimization techniques described in Grieco to determine the most effective concentrations. This is a standard practice in the field to find the minimum effective dose and to characterize a new repellent compound.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this optimization. Grieco demonstrates that testing various concentrations to find an effective range is a standard, well-understood procedure for insect repellents, not a process requiring undue experimentation.

Ground 3: Obviousness of Claims 1, 4-5, 7-8, 14, and 19-26 over Behan in view of Carroll

• Prior Art Relied Upon: Behan (WO 2000/019822) and Carroll (a 2005 journal article titled "Repellency of Deet and SS220 Applied to Skin Involves Olfactory Sensing by Two Species of Ticks").
• Core Argument:
  • Prior Art Mapping: As established in other grounds, Behan discloses using isolongifolanone to repel arthropods, specifically mentioning mosquitoes like Aedes aegypti. The dependent claims 19-26 of the ’016 patent further limit the method to specific arthropod species, including Anopheles stephensi, Ixodes scapularis, and Amblyomma americanum. Petitioner used Carroll to show it was known that a repellent effective against one type of arthropod, like Aedes aegypti, would likely be effective against other common disease-carrying arthropods. Carroll specifically demonstrates that the repellent SS220 is effective against Aedes aegypti and also repels Anopheles stephensi, Ixodes scapularis, and Amblyomma americanum.
  • Motivation to Combine: A POSITA, having learned from Behan that isolongifolanone repels Aedes aegypti, would be motivated to test its efficacy against other significant pests. The work in Carroll suggests that such cross-species testing is a logical next step in evaluating the commercial and public health utility of a known repellent.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success. Carroll establishes that repellency can extend across different species and genera of arthropods, making it predictable that a compound effective against one type of mosquito would also be effective against other mosquitoes and ticks.

4. Key Technical Contentions (Beyond Claim Construction)

• Petitioner highlighted the prosecution history of the European counterpart to the ’016 patent. During that prosecution, the Patent Owner allegedly amended its claims to be directed only to "-enone" or double-bond compounds to overcome prior art. The Patent Owner acknowledged that Behan described isolongifolanone, an "-anone" or single-bond compound, as an insect repellent. Petitioner argued this was a direct admission that isolongifolanone was known in the art, which contradicts the patentability of the broader claims in the ’016 patent that encompass such compounds.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 4-5, 7-8, and 14-26 of Patent 7,579,016 as unpatentable under 35 U.S.C. §§ 102 and 103.