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
Moore, Reyna, and Taranto, Circuit Judges.
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.
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
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
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.
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.
appealed. We have jurisdiction under 28 U.S.C. §