789 Fed.Appx. 861 (Fed. Cir. 2019), 2018-1980, Wilson v. Martin

Docket Nº:2018-1980
Citation:789 Fed.Appx. 861
Party Name:John R. WILSON, Appellant v. Gregory Roger MARTIN, Allison Jean Tanner, Appellees
Attorney:Devan V. Padmanabhan, Padmanabhan & Dawson, PLLC, Minneapolis, MN, argued for appellant. Also represented by Erin Dungan, Paul J. Robbennolt, Sri Sankaran. Linda T. Coberly, Winston & Strawn LLP, Chicago, IL, argued for appellees. Also represented by Kimball Richard Anderson; Michael L. Goldman, ...
Judge Panel:Before Prost, Chief Judge, Reyna and Stoll, Circuit Judges.
Case Date:October 21, 2019
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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789 Fed.Appx. 861 (Fed. Cir. 2019)

John R. WILSON, Appellant

v.

Gregory Roger MARTIN, Allison Jean Tanner, Appellees

No. 2018-1980

United States Court of Appeals, Federal Circuit

October 21, 2019

Editorial Note:

This Disposition is Nonprecedential. (See Federal Rule of Appellate Procedure Rule 32.1. See also U.S.Ct. of App. Fed. Cir. Rule 32.1.)

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Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 106,060.

Devan V. Padmanabhan, Padmanabhan & Dawson, PLLC, Minneapolis, MN, argued for appellant. Also represented by Erin Dungan, Paul J. Robbennolt, Sri Sankaran.

Linda T. Coberly, Winston & Strawn LLP, Chicago, IL, argued for appellees. Also represented by Kimball Richard Anderson; Michael L. Goldman, Andrew Peter Zappia, Pepper Hamilton LLP, Rochester, NY.

Before Prost, Chief Judge, Reyna and Stoll, Circuit Judges.

OPINION

Reyna, Circuit Judge.

John R. Wilson appeals from a decision of the Patent Trial and Appeal Board in an interference proceeding finding certain claims of U.S. Patent No. 8,809,044 unpatentable as anticipated or obvious. Because substantial evidence supports the Board’s

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finding that the prior art discloses the claimed "ambient gas" limitation, and the Board did not abuse its discretion by refusing to apply judicial estoppel, we affirm .

BACKGROUND

I. The ’044 Patent and the ’267 Application

John R. Wilson is the listed inventor on U.S. Patent No. 8,809,044 ("the ’044 patent"), which is entitled "Highly Efficient Gas Permeable Devices and Methods for Culturing Cells." The ’044 patent, assigned to Wilson Wolf Manufacturing Corporation, is directed to methods of using gas-permeable devices to culture animal cells. ’044 patent, Abstract; J.A. 8. The ’044 patent teaches that cells are generally cultured in the presence of oxygenated gas and a liquid culture medium that provides the cells with nutrients.

See id. col. 3 ll. 37-47. The ’044 patent describes a cell culture device having multiple vertical shelves containing two or more culture compartments into which cells and a culture medium are placed. Id. col. 4 ll. 36-38, col. 8 ll. 41-48, col. 12 ll. 47-54. The culture compartments are connected by a manifold and include an access port through which cells and medium are added or removed. Id. col. 9 ll. 20-22. These compartments include at least one wall that is comprised of a gas-permeable material and are separated by a space which contains oxygenated gas. Id. col. 8 ll. 42-45. This gas passes through the gas-permeable portions of the culture compartment and delivers oxygen to the cells. Id. col. 10 ll. 17-21. The ’044 patent discloses that this oxygenated gas is preferably "ambient gas." Id. col. 9 ll. 35-37.

Figure 3 of the ’044 patent illustrates an embodiment of this cell culture device, where oxygenated gas 100 flows from gas space 50 to cells 90 placed within culture compartments 20:

FIG. 3

(Image Omitted)

​ Id. Fig. 3, col. 10 ll. 17-21. Gregory Roger Martin and Allison Jean Tanner (collectively, "Martin") are the listed inventors on U.S. Patent Application No. 14/814,267, entitled "Multilayered Cell Culture Apparatus" and published as U.S. Patent Application Publication No. 2015/0337252 on November 26, 2015 ("the ’267 application"). The ’267 application was filed by Corning Incorporated ("Corning"). Like the ’044 patent, the ’267 application is also directed to a cell culture device with two or more culture compartments comprised of a gas-permeable material that permits the delivery of oxygenated

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gas to the cells being cultured within. ’267 application, ¶ 11.

Every claim at issue in this appeal requires that the cells are cultured in the presence of "ambient gas." Independent claim 1 of the ’044 patent corresponds to the interference count and recites: 1. A method of culturing animal cells in a gas permeable multi-shelf cell culture apparatus, the method comprising:

adding animal cells and media into a gas permeable multi-shelf apparatus comprising two or more culture compartments, each compartment including a shelf comprised of gas permeable, liquid impermeable material for cells to reside upon, each shelf connected to an opposing surface, a fluid pathway shared by said culture compartments, and each said shelf is in contact with a gas space,

whereby said apparatus is incubated in the presence of ambient gas suitable for animal cell culture, oriented in a position such that said culture compartments are located one above the other, each said shelf is in a horizontal position with said gas space located below it, animal cells reside upon at least a portion of each said shelf, said culture compartments include media in contact with said shelf and said opposing surface, and ambient gas resides within each said gas space and is in contact with each shelf.

’044 patent col. 30 ll. 18-37 (emphasis added).

Independent claim 2 of the ’267 application, which is almost identical to claim 1 of the ’044 patent, corresponds to the interference count and recites: 2. A method of culturing cells in a gas permeable multi-shelf cell culture apparatus, the method comprising:

adding cells and media into a gas permeable multi-shelf apparatus comprising two or more culture compartments, each compartment including a shelf comprised of gas permeable, liquid impermeable material for cells to reside upon, each shelf connected to an opposing surface, a fluid pathway shared by said culture compartments, and each said shelf is in contact with a gas space,

whereby said apparatus is incubated in the presence of ambient gas suitable for cell culture, oriented in a position such that said culture compartments are located one above the other, each said shelf is in a horizontal position with said gas space located below it, cells reside upon at least a portion of each said shelf, said culture compartments include media in contact with said shelf and said opposing surface, and ambient gas resides within each said gas space and is in contact with each shelf.

’267 application at 7.

II. Toner

U.S. Patent No. 6,759,245 ("Toner"), entitled "Cell Culture Systems and Methods for Organ Assist Devices," is directed to systems and methods for culturing animal cells using modular cell culturing devices with gas-permeable membranes. J.A. 1540 (Toner col. 1 ll. 20-21, col. 2 ll. 35-36, 51-53). Toner teaches that by using a gas-permeable, liquid-impermeable membrane for the culture compartment, the delivery of oxygen to the cells may be separated from delivery of the culture medium. J.A. 1540, 1542 (Toner col. 2 ll. 36-43, col. 5 ll. 52-53). To deliver oxygen to the cells, Toner discloses using an "oxygenated fluid," and explains that "[o]xygenated fluids can be gases or liquids, and can include air ... and other gasses commonly found in nature." J.A. 1543 (Toner col. 7 ll. 63-65, col.

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8 ll. 3-9). Toner further discloses that the oxygenated fluid can be supplied to the interior of the culture compartment "through an opening," such as "a port or manifold." Id. (Toner col. 8 ll. 43-51). "Other ports" may be also added "for air displacement" or "for venting oxygenated fluids." J.A. 1549 (Toner col. 19 ll. 43-46, 50-53). The flow of oxygenated fluid through the interior of the cell culture device "can be static, in any one direction, or in multiple directions." J.A. 1548 (Toner col. 17 ll. 1-2).

Toner’s Figures 8a and 8b are relevant to this appeal. Figure 8a illustrates a preferred embodiment of Toner’s cell culture device with three culture compartments:

(Image Omitted)

FIG. 8a

J.A. 1526 (Toner Fig. 8a). Each of the three culture compartments illustrated in Figure 8a includes a gas-permeable, liquid-impermeable membrane 30 to hold the cultured cells 40, a compartment 10 to hold biological liquid nutrition for the cells, and a rigid, impermeable housing 50. J.A. 1549 (Toner col. 19 ll. 30-35). Inlet port 3 and outlet port 3’ are used to conduct the oxygenated fluid into and out of the common oxygenated fluid compartment 222, where the oxygenated fluid comes into contact with membranes 30, thereby delivering oxygen to the cells. Id. (Toner col. 19 ll. 35-37). Inlet port 5 and outlet port 5’ are used for the biological liquid, which is delivered to each culture compartment via manifold 555 and is removed via manifold 555’. Id. (Toner col. 19 ll. 37-43). "Other ports for venting oxygenated fluids may also be added to the impermeable wall 505 of the bioreactor 1." Id. (Toner col. 19 ll. 52-53).

Toner’s Figure 8b illustrates an alternate embodiment, where instead of a common oxygenated fluid compartment 222, each cell culture compartment includes its own separate oxygenated fluid compartment 20:

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(Image Omitted)

J.A. 1527 (Toner Fig. 8b); see also J.A. 1549 (Toner col. 19 ll. 56-61).

III. Proceedings Before the Board

On November 25, 2015, Martin requested an interference between the ’044 patent and the ’267 application under 35 U.S.C. § 135(a).1 The Patent Trial and Appeal Board ("the Board")2 declared the interference on October 31, 2016. Claims 1-45 of the ’044 patent and claims 2-45 of the ’267 application correspond to the interference count.3 J.A. 5.

During the interference, Martin filed a motion with the Board, arguing that claims 1-5, 7-10, 12-14, 16-20, 22-23, 25-26, 28-30, 33-37, 39-42, and 44-45 of the ’044 patent are invalid as anticipated under 35 U.S.C. § 102(b)4 by Toner. J.A. 10. In support of its motion, Martin submitted two declarations by its expert, Dr. Crespi. J.A. 13. Wilson opposed Martin’s motion, relying on his own testimony as an expert witness. J.A. 16.

In its motion, Martin proposed a construction for the term "ambient gas," seeking

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