PTAB

IPR2014-01550

ABS Global Inc v. XY Inc

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Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Method of Cryopreserving Selected Sperm Cells
  • Brief Description: The ’425 patent relates to methods for cryopreserving non-human mammalian sperm cells after they have been separated into a discrete population based on a specific characteristic, such as separating X chromosome-bearing sperm from Y chromosome-bearing sperm via flow cytometry.

3. Grounds for Unpatentability

Ground 1: Obviousness over Seidel and Salisbury - Claims 1-4, 6-9, 11-13, 15, 21-28, and 31-34 are obvious over Seidel in view of Salisbury.

  • Prior Art Relied Upon: Seidel (Patent 7,195,920) and Salisbury (a 1978 publication titled "Physiology of Reproduction and Artificial Insemination of Cattle").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Seidel disclosed all elements of independent claim 1 except for the final freezing step. Seidel taught a method for sex selection in mammalian offspring by differentiating and separating sperm cells (specifically bovine sperm) into discrete populations of X- and Y-chromosome bearing cells using flow cytometry. Salisbury, described as a foundational text in the field, was argued to provide the missing element by disclosing detailed, conventional methods for freezing sperm, including specific extender compositions, equilibration periods, and cryopreservation techniques. Petitioner contended that the dependent claims were also rendered obvious, as their limitations (e.g., specific extender components like egg-yolk-Tris, antibiotics, and cryoprotectants) were explicitly taught in Salisbury as standard components for freezing bovine sperm.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Seidel’s separation method with Salisbury’s freezing method to realize the well-known commercial benefits of both technologies. Separated sperm (taught by Seidel) allows for control over offspring sex, which is highly valuable in the dairy industry, while frozen sperm (taught by Salisbury) enables long-term storage, long-distance transport, and insemination at the optimal time.
    • Expectation of Success: A POSITA would have had a high expectation of success. Petitioner asserted that both sperm separation by flow cytometry and sperm cryopreservation were well-established, routine procedures by the patent's priority date. Numerous publications had already reported success in freezing sperm that had undergone separation procedures, making the combination predictable.

Ground 2: Obviousness over Fugger - Claims 1-4, 6, 25-26, and 31-32 are obvious over Fugger.

  • Prior Art Relied Upon: Fugger (a 1998 publication in Human Reproduction detailing the "MicroSort" sperm separation method).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Fugger disclosed every step of the claimed method, including obtaining sperm, differentiating and separating it into X- and Y-chromosome populations using flow cytometry, and subsequently freezing the selected sample. The key difference was that Fugger’s method pertained to human sperm, whereas the ’425 patent claims are limited to non-human mammals.
    • Motivation to Combine (Adapt): A POSITA would have been motivated to apply the method disclosed in Fugger to non-human mammals, such as cattle, to achieve the significant commercial benefits associated with sex-selected, frozen animal sperm. Given the economic drivers in animal husbandry, adapting a successful human-focused method to a commercially vital animal species was a simple and obvious step.
    • Expectation of Success: Success would have been expected because the underlying techniques—flow cytometry for sperm separation and cryopreservation—were already well-known and successfully practiced on non-human mammals like bulls. Therefore, applying Fugger’s integrated process to non-human species was merely the application of a known technique to a known subject matter.

Ground 3: Obviousness over Fugger and Salisbury - Claims 7-9, 11-13, 15, 21-24, 27-28, and 33-34 are obvious over Fugger in view of Salisbury.

  • Prior Art Relied Upon: Fugger (a 1998 publication) and Salisbury (a 1978 publication).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the teachings of Fugger by using Salisbury to supply teachings for more specific dependent claims not explicitly detailed in Fugger, particularly those related to optimal extender compositions and processing steps for bovine sperm. While Fugger taught the overall process of separation and freezing, Petitioner argued a POSITA seeking to apply this process to cattle would consult a standard reference like Salisbury for species-specific protocols. Salisbury provided explicit teachings on equilibrating sperm in a final extender, recommended equilibration times (3-6 hours), and optimal extender compositions for bovine sperm (e.g., egg-yolk-Tris with ~6% glycerol).
    • Motivation to Combine: The motivation was to optimize the general method taught by Fugger for a specific, commercially important application (bovine sperm). A POSITA would recognize that freezing protocols can be species-specific and would naturally turn to an authoritative text like Salisbury to find established, reliable methods for cattle, thereby improving the efficiency and success rate of the process.
    • Expectation of Success: A POSITA would have reasonably expected success in combining the teachings. The combination represented adapting a known process (Fugger) using standard, proven optimization techniques for the target species (Salisbury), a routine approach in the field.

4. Key Claim Construction Positions

  • "separated" sperm cells: Petitioner proposed the construction "to set or keep apart," arguing this plain and ordinary meaning is supported by the specification, which equates "separating" with "selecting." This construction was central to mapping prior art that isolates one population of sperm (e.g., X-bearing) from another.
  • "freezing": Petitioner argued for a broad construction of "any known method for taking sperm from a liquid to a solid state by loss of heat, so long as the cells retain sufficient viability to result in pregnancy." This was intended to encompass the conventional freezing techniques described in the prior art and prevent a narrower interpretation that might exclude them.
  • "final extender": Relying on the specification's express definition, Petitioner argued this term means "a medium used to extend...sperm prior to the freezing step." This construction aligned the claim term with standard media disclosed in Salisbury, which are used to dilute and preserve sperm viability before freezing.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-4, 6-9, 11-13, 15, 21-28, and 31-34 of the ’425 patent as unpatentable under 35 U.S.C. §103.