March 31, 2017Newsletter

This Week at the Board - March 31, 2017

PTAB Sides With Patent Owner Based On Evidence of Secondary Considerations

In a recent inter partes review, the Board found evidence submitted by the Patent Owner of secondary considerations to be persuasive. Specifically, the Patent Owner relied on expert testimony from three different doctors who opined that the claimed invention (a method of treating multiple sclerosis) produced unexpected results. The Board found that the Petitioner’s reply to the evidence did not effectively address the Patent Owner’s unexpected results argument. The Petitioner had merely argued that the asserted success was expected, not unexpected. The Board pointed out, however, that the Patent Owner’s argument was not merely that it would have been unexpected that some lower doses would be an effective therapeutic treatment. Instead, the argument was that the magnitude of the clinical efficacy at the specifically claimed dose of about 480 mg/day would have been unexpected. For this reason, the Board sided with the Patent Owner, finding that the Petitioner had failed to show by a preponderance of the evidence that the claims were unpatentable.    

A link to the PTAB’s Decision is provided here.

Federal Circuit Urged to Find that Timeliness of Petitions Is Not Appealable

In a recent brief filed with the Federal Circuit, Broadcom Corporation urged the Federal Circuit to reaffirm its decision in Achates and to hold that a patent owner whose patent has been found invalid in an inter partes review should be unable to appeal the Board’s determination that the underlying petition was timely under § 315(b). In the brief, Broadcom argued that the issue of timeliness is one that is a central aspect of the institution decision, and thus falls within the scope of § 314(d). Broadcom argued that Cuozzo held that § 314(d) bars challenges that are “closely tied” to the application and interpretation of statutes related to the Patent Office’s decision to institute, and that § 315(b) is just such a statute. Broadcom also argued that allowing parties to relitigate the threshold issue of timeliness would severely undermine Congress’s goal of providing a speedy and efficient alternative for challenging the validity of patents, but that exceptions should apply for constitutional challenges, ultra vires decisions, and decisions exceeding the scope of the Board’s authority.         

A link to the brief is provided here.

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