PTAB

PGR2020-00033

Commonwealth Scientific Industrial Research Organisation v. BASF Plant Sciences GmbH

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Oils, Lipids and Fatty Acids Produced in Transgenic Brassica Plant
  • Brief Description: The ’638 patent relates to oils, lipids, and/or fatty acids produced by genetically modified (transgenic) Brassica plants. The invention claims specific compositions containing high percentages of certain polyunsaturated fatty acids (PUFAs), such as eicosapentaenoic acid (EPA), docosapentaenoic acid (DPA), and docosahexaenoic acid (DHA).

3. Grounds for Unpatentability

Ground 1: Lack of Written Description and Enablement under 35 U.S.C. §112 - Claims 1-23

  • Core Argument for this Ground: Petitioner argued that the ’638 patent and its priority applications fail to meet the written description and enablement requirements of 35 U.S.C. §112. The central contention is that the specification does not demonstrate that the inventors were in possession of the claimed invention, nor does it teach a person of ordinary skill in the art (POSITA) how to make and use the full scope of the claims without undue experimentation.
    • Prior Art Mapping: This ground is not based on prior art, but on the patent’s own disclosure. Petitioner asserted that the claims recite specific, high percentage ranges of various fatty acids (e.g., "at least 54% by weight of polyunsaturated ω3-fatty acids" in claim 9; "at least 20% by weight of EPA" in claim 1) that are not supported by any working examples in the specification. The patent’s sole example in a Brassica plant reports fatty acid levels far below the claimed thresholds (e.g., 17.2-19.6% ω3-fatty acids and 4.1-4.5% EPA).
    • Key Aspects: Petitioner contended that data from other non-Brassica plants disclosed in the patent (e.g., O. violaceous) is not representative or predictive of results achievable in Brassica. The petition also highlighted that the Patent Owner, during prosecution, successfully argued that a similar prior art reference was non-enabling for disclosing much lower fatty acid levels. Petitioner maintained this same logic should invalidate the ’638 patent, which discloses only a marginal improvement over that prior art and still fails to exemplify the claimed ranges. Because the specification provides no guidance on how to achieve the high levels of fatty acids claimed, it fails to enable the full scope of the claims.

Ground 2: Anticipation over Knutzon and Petrie - Claims 9, 10, 12-14, and 16 are anticipated under §102

  • Prior Art Relied Upon: Knutzon (WO 1999/64614) and Petrie (WO 2015/196250).
  • Core Argument for this Ground: Petitioner argued that multiple claims are anticipated by express disclosures in Knutzon and Petrie.
    • Prior Art Mapping: Petitioner alleged that Knutzon discloses transgenic Brassica napus plants and provides data in its Table 1 for a seed composition with a combined total of 59.97% ω3-fatty acids (ALA and SDA). This sum was argued to anticipate the "at least 54% by weight of polyunsaturated ω3-fatty acids" limitation of claim 9. Similarly, Petitioner asserted that Petrie describes transgenic Brassica plants and discloses in its Tables 9 and 17 seedoil compositions containing 66.8% and 56.8% ω3-fatty acids, respectively, also anticipating claim 9. Further, Petrie was argued to disclose specific amounts of DPA (2%) and DHA (13.5% and 34.3%) that anticipate the limitations of claims 12 and 13.

Ground 3: Anticipation or Obviousness over the ’093 Publication - Claims 1-23 are anticipated under §102 or obvious under §103

  • Prior Art Relied Upon: Cirpus et al. (’093 publication; WO 2005/083093), which corresponds to Patent 9,458,436.
  • Core Argument for this Ground: Petitioner presented a conditional argument that if the challenged claims of the ’638 patent are deemed to be enabled, then the nearly identical disclosure of the ’093 publication must also be considered enabling, thereby anticipating or rendering the claims obvious.
    • Prior Art Mapping: The ’093 publication, a prior art reference by the Patent Owner, discloses the same core technology of producing PUFAs in transgenic plants. Petitioner argued that the ’638 patent offers only minor modifications (e.g., using a codon-optimized Δ5 elongase that was itself disclosed as a preferred sequence in the ’093 publication) and shows only a slight increase in some fatty acid levels compared to the results in the ’093 publication.
    • Key Aspects: This ground strategically leverages the Patent Owner’s arguments during prosecution, where the Patent Owner distinguished the ’093 publication by arguing it did not enable the high fatty acid levels of the pending claims. Petitioner contended that since the ’638 patent’s own disclosure also fails to demonstrate those high levels, it is not enabled. However, if the Board finds the ’638 patent is enabled, then the substantively identical ’093 publication must also be enabling and would therefore invalidate the claims as anticipated.

4. Key Claim Construction Positions

  • Petitioner argued that claim terms should be given their ordinary and customary meaning.
  • For claims reciting percentages "based on the total fatty acids in the transgenic plant in the form of triacylglycerides," Petitioner construed this to mean the weight of the specified fatty acid in triacylglycerides (TAG) divided by the weight of total fatty acids in TAG.
  • For claims reciting percentages "based on the total fatty acids in the transgenic plant," Petitioner construed this to mean the weight of the specified fatty acid in the plant divided by the weight of total fatty acids in the plant.

5. Relief Requested

  • Petitioner requested institution of a Post-Grant Review and cancellation of claims 1-23 of the ’638 patent as unpatentable.