UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. INGURAN, LLC d/b/a SEXING TECHNOLOGIES, Petitioner

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1 Paper No. 10 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD INGURAN, LLC d/b/a SEXING TECHNOLOGIES, Petitioner v. PREMIUM GENETICS (UK) LTD., Patent Owner Case No. PGR U.S. Patent 8,933,395 PATENT OWNER S REQUEST FOR REHEARING OF DECISION OF INSTITUTION OF POST GRANT REVIEW

2 EXHIBIT LIST PGR Exhibit No. Ex Ex Description U.S. Patent No. 5,007,732 to Ohki et al. New Zealand Provisional Application NZ to Frontin- Rollet ii

3 PGR I. INTRODUCTION Pursuant to 37 C.F.R (d), Patent Owner Premium Genetics (UK) Ltd. requests rehearing of the Board s decision to institute post-grant review of claim 1 on the grounds of anticipation by both Mueth and Frontin-Rollet. The Board misapprehended or overlooked the fact that, in light of the Board s determination regarding the effective filing date of claim 1, Mueth and Frontin- Rollet do not qualify as prior art to claim 1. Thus, the decision to institute trial on anticipation based on these references is legally erroneous. Patent Owner therefore respectfully requests that the Board reconsider its decision to institute trial on these grounds. II. ARGUMENT Claim 1 of the 395 Patent is entitled to an effective filing date of at least September 3, The 395 Patent was filed on January 31, 2014, but was prosecuted as a continuation of application No. 13/412,969 filed on March 6, 2012 ( the 969 Application ), which, through a series of continuations and divisionals, claims priority back to application No. 10/934,597 filed on September 3, 2004 ( the 597 Application ). The Board considered and rejected Petitioner s argument (Pet. at 13) that the 969 Application did not disclose claim 1 of the 395 Patent. Institution Decision at In light of this determination, and given that the parties agree that the 969 Application and 597 Application specifications are 1

4 PGR identical (see id. at 11), claim 1 is entitled to an effective filing date at least as early as the filing date of the 597 Application September 3, Given this effective filing date, neither Mueth (Ex. 1008) nor Frontin-Rollet (Ex. 1007) qualify as prior art to claim 1. Mueth is a United States patent with a filing date of February 1, 2005 and an earliest publication date of August 3, See Ex at 1. Thus, Mueth cannot be prior art to claim 1 under 35 U.S.C. 102(a)(1) as stated in the Institution Decision (at 3). 1 Nor does Mueth qualify as prior art to claim 1 under 35 U.S.C. 102(a)(2), since Mueth s filing date is February 1, 2005 nearly 6 months after claim 1 s effective filing date. Frontin-Rollet is an international patent application with a filing date of January 19, 2005, and a publication date of August 18, See Ex at 1. Thus, Frontin-Rollet cannot be prior art to claim 1 under 35 U.S.C. 102(a)(1) as stated in the Institution Decision (at 3). Furthermore, Frontin-Rollet cannot be prior art to claim 1 under 35 U.S.C. 102(a)(2). Although Frontin-Rollet references an earlier-filed New Zealand application having a February 5, 2004 date (NZ ), that provisional New Zealand application is not identical to the Frontin-Rollet reference relied upon by Petitioner. Compare Ex with Ex. 1 In view of the Board s determination that at least one claim in the 395 patent has an effective filing date after March 16, 2013, AIA 102 applies to each claim in the 395 patent even if some claims have an effective filing date before March 16, See MPEP

5 PGR For example, Petitioner and the Board rely on Figures 1-3 and 6 of Ex to establish anticipation by Frontin-Rollet. See Institution Decision at 28. However, none of Figures 1-3 or 6 appear in NZ (Ex. 2002). Indeed, the Petition makes no effort to show that Frontin-Rollet (Ex. 1007) is entitled to an effective filing date earlier than its actual filing date, and there is no basis in the record to reach such a conclusion. III. CONCLUSION Because neither Mueth nor Frontin-Rollet qualify as prior art to claim 1 for purposes of 35 U.S.C. 102, Petitioner has not established that there is a reasonable likelihood of prevailing in its challenge of claim 1 with respect to these references. Patent Owner therefore respectfully requests that the Board deny institution of post-grant review with respect to claim 1 on the grounds of anticipation by both Mueth and Frontin-Rollet. Date: January 5, 2016 Respectfully submitted, /s/ Jeffrey P. Kushan Jeffrey P. Kushan Registration No. 43,401 Sidley Austin LLP 1501 K Street, N.W. Washington, D.C Counsel for Patent Owner 3

6 CERTIFICATE OF SERVICE I hereby certify that a copy of REQUEST FOR REHEARING OF DECISION OF INSTITUTION OF POST GRANT REVIEW has been served by on the following for patent owner(s): Kirt S. O'Neill (koneill@akingump.com) Daniel L. Moffett (dmoffett@akingump.com) George Andrew Rosbrook (arosbrook@akingump.com) AKIN GUMP STRAUSS HAUER & FELD LLP 300 Convent Street, Suite 1600 San Antonio, Texas Date: January 5, 2016 Respectfully submitted, /Jeffrey P Kushan/ Jeffrey P. Kushan Reg. No. 43,401 Counsel for Patent Owner