April 20, 2017Newsletter

This Week at the Board - April 20, 2017

Federal Circuit Largely Affirms Two PTAB Decisions

In a recent consolidated decision (2015-2078, 2015-2079, 2015-2093, 2015-2096), the Federal Circuit affirmed the Board’s decisions in two IPRs regarding the patentability of 20 out of 21 claims of U.S. Patent No. 5,602,524, and reversed the Board’s decision for the remaining claim. The Federal Circuit considered the Patent Owner’s argument that the Board erred in construing claim terms in their ultimate finding of unpatentability, but found these arguments unpersuasive. In addition, the Federal Circuit was not swayed by the Petitioners’ arguments that the Board erred in its conclusion regarding the factual content of the prior art with regards to multiple dependent claims. The Petitioners, however, were able to convince the Federal Circuit that the Board erred in its construction of one dependent claim leading to the reversal of the Board’s decision.

A link to the Federal Circuit Decision is provided here.

Federal Circuit Upholds PTAB Decision Invalidating Claims of Novartis Patents

In a recent decision (2016-1678, 2016-1679), the Federal Circuit affirmed the Board’s decision finding various claims of Novartis’ U.S. Patent Nos. 6,316,023 and 6,335,031 were unpatentable. In their appeal to the Federal Circuit, Novartis argued that the Board unlawfully arrived at a different conclusion than the Federal Circuit and a U.S. District Court, and that the Board had erred in its factual findings. The Board disagreed, stating that the Novartis argument failed on both factual and legal grounds because the record differed in the prior litigation and because the standard for review is different in inter partes review and district court litigation. In addition, the Federal Circuit found that the Board’s decision to find claims of the ‘023 Patent and the ‘031 Patent obvious was supported by substantial evidence. As such, the Federal Circuit affirmed the Board’s conclusion of unpatentability for the challenged claims.

A link to the Federal Circuit Decision is provided here.

PTAB Institutes IPR Despite Prior Art Having Been Before the Examiner and Despite Strategic Filing by the Petitioner

In IPR2016-01905, the Board instituted an inter partes review, despite the fact that some of the prior art had already been before the Examiner during prosecution. The Board noted that §325(d) does not prohibit the Board from instituting an inter partes review based on prior art or arguments previously presented to the Office. In this matter, while one of the prior art references was previously before the Examiner, Petitioner’s arguments were not necessarily those that the Patent Owner was faced with during prosecution. Additionally, the Petitioner was also relying on a second, different reference not relied upon during prosecution before the Examiner, even though the reference was cited in an Information Disclosure Statement during prosecution. The Patent Owner also asserted that the Petition was strategically filed after the Petitioner received Patent Owner’s Preliminary Response and the Board’s Institution Decision in an inter partes review of a different patent (i.e., the parent patent). The Board, noted, however, that the claims in the other patent were different, and thus Petitioner’s asserted strategic filing was not a “second bite at the apple” as asserted by the Patent Owner.      

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

Federal Circuit Affirms Unpatentability of Novartis MS Drug Patent

In a recent decision (2016-1352), the Federal Circuit affirmed the Board’s decision to invalidate all claims of a Novartis patent directed to the multiple sclerosis drug Gilenya. In the Final Written Decision, the Board found that two references rendered all claims of the patent obvious and cited another document, which was originally set forth as grounds for challenging the patentability of the claims in a petition for IPR, as evidence of motivation to combine the two references (“the evidentiary document”). In their appeal to the Federal Circuit, Novartis alleged the PTAB’s reliance on the evidentiary document as evidence for motivation to combine the two references violated the Administrative Procedure Act (APA) in addition to arguing that the Board erred in its analysis of the motivation to combine references and the treatment of their objective indicia of non-obviousness. The Federal Circuit did not find either argument persuasive. The Court stated that the Petitioner had cited the evidentiary reference as evidence of a motivation to combine and that the Board had sufficiently discussed the relevance of the evidentiary reference in its institution decision such that the reliance on it as evidence for a motivation to combine the two references did not violate the notice and opportunity to be heard provisions of the APA. Furthermore, the Court found that the record reflected an obviousness analysis that properly addressed both the motivation to combine the two references and the objective indicia of non-obviousness presented by Novartis. 

A link to the Federal Circuit Decision is provided here.

PTAB Rejects Patent Owner’s RPI Argument in Institution Decision

In a recent decision granting institution of inter partes review (IPR2017-00044), the Board rejected a Patent Owner’s contention that institution should be denied based on the Petitioner allegedly failing to name all real parties-in-interest. The Patent Owner presented an argument implying that two other entities exerted control over the proceedings because they cooperated with the Petitioner in related district court litigation (e.g., via use of the same counsel and same expert testimony). In rejecting this argument, the Board stated there was no definitive evidence the other parties controlled the Petitioner’s participation in the inter partes review as required by the highly fact-dependent question of whether an entity is a real party in interest. Furthermore, the Board noted that mere status as a co-defendant is insufficient to establish control over another proceeding, and that the Patent Owner expressly stated that no other entities had authority to direct or control the Petitioner’s actions or decisions in the petition in direct contradiction to the Patent Owner’s contention. With this argument rejected, the Board went on to find that the Petitioner was reasonably likely to prevail with respect to their challenge of at least one claim and thus instituted the trial.        

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

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