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The General Hospital Corp. v. Sienna Biopharmaceuticals, Inc.

United States Court of Appeals, Federal Circuit

May 4, 2018

THE GENERAL HOSPITAL CORPORATION, Appellant
v.
SIENNA BIOPHARMACEUTICALS, INC., Appellee

          Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 106, 037.

          Philippe Bennett, Alston & Bird LLP, New York, NY, argued for appellant. Also represented by Walter Scott; Aoife Butler, Chicago, IL; Peter Carl Lauro, Brian Landry, Saul Ewing Arnstein & Lehr LLP, Boston, MA.

          Brenton R. Babcock, Knobbe, Martens, Olson & Bear, LLP, Irvine, CA, argued for appellee. Also represented by Edward M. Cannon.

          Before Moore, Reyna, and Taranto, Circuit Judges.

          Moore, Circuit Judge.

         General Hospital Corp. ("GHC") appeals the Patent Trial and Appeal Board's dismissal of an interference determining it lacked standing because claims of U.S. Patent Application No. 13/789, 575 lacked sufficient written description under § 112 of the Patent Act. It further appeals the Board's denial of its contingent motion to add a new claim. We vacate the Board's termination of the interference and remand for further proceedings.

         Background

         The claims at issue relate to methods of removing hair using nanoparticles to damage hair follicles. GHC is the named applicant on the '575 application, and Sienna Biopharmaceuticals, Inc. ("Sienna") owns U.S. Patent No. 8, 821, 941. On October 8, 2015, at GHC's suggestion, the Board declared an interference. The Board identified claim 1 of the '941 patent as the sole count. Claim 1 is directed to a method of localizing thermal damage to a hair follicle by applying a composition comprising a plurality of unassembled plasmonic nanoparticles to a skin surface. Relevant to this appeal, claim 1 requires "the unassembled plasmonic nanoparticles have a concentration of 109 to 1023 particles per ml of the composition, wherein said concentration is sufficient to, after exposure to irradiation, induce thermal damage in the hair follicle."

         The Board identified claims 65-67 of the '575 application and claims 1-20 of the '941 patent as corresponding to that count. Claim 65 is representative of the '575 claims. Like claim 1, it is directed to a method of localizing thermal damage to a hair follicle by applying a composition comprising a plurality of unassembled plasmonic nanoparticles to a skin surface. In claim 65, "the unassembled plasmonic nanoparticles have a concentration of about 6.6 × 1011 particles per ml of the composition." The Board construed "about" as it appears in claim 65 to mean "within 10%." Therefore, "about 6.6 × 1011 particles per ml" encompasses of a range of at most from 5.94 × 1011 to 7.26 × 1011 particles per ml.

         Sienna moved for a determination that claims of the '575 application were unpatentable for failure to meet the written description requirement. The disclosure in the '575 application describes formulations by reference to optical density (OD) rather than particles per ml. The parties disputed the proper extinction coefficient to be used in converting optical density to concentration in particles per ml. The Board accepted an extinction coefficient of 4.2, crediting the testimony of Sienna's expert Dr. Tao over the testimony of GHC's expert Dr. Dmochowski. Applying this coefficient, the Board found no concentrations disclosed in the '575 disclosure were between 5.94 × 1011 and 7.26 × 1011 particles per ml. The Board, therefore, found claims 65-67 lack written description support and are unpatentable under § 112.

         GHC moved to add new claim 74 expressly limiting the nanoparticles to have "an Optical Density of 250 O.D. when measured at a wavelength of about 810 nm." The Board denied this motion, determining that GHC did not show interference-in-fact with Sienna claim 1, or correspondence to Count 1, and failed to provide supporting evidence that this claim was patentable.

         GHC appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

         Discussion

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