IP Newsflash

The Patent Trial and Appeal Board denied a patent owner’s motion for additional discovery of documents—from petitioners, real parties-in-interest, and third parties—because patent owner failed to show that such discovery would support a showing of nonobviousness. In an inter partes review (IPR), under 37 C.F.R. § 42.51(b)(2), absent agreement of the parties, a moving party must establish that additional discovery is justified in the “interests of justice.” In making such a determination, the PTAB considers the five factors articulated in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR 2012-00001, Paper 26 at 6-7 (PTAB Mar. 5, 2013): (1) whether the moving party possesses evidence tending to show beyond speculation that something useful will be uncovered; (2) whether the moving party is requesting the other party’s litigation positions and the underlying basis for those positions; (3) whether the moving party has the ability to generate the requested or equivalent information without discovery; (4) whether the moving party’s discovery requests are easily understandable; and (5) whether the requests are not overly burdensome to answer.

The Patent Trial and Appeal Board recently denied a patent owner’s request for rehearing of an institution decision, rejecting arguments that previously raised evidence of objective indicia should have been addressed in a petition for inter partes review (IPR).

The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board finding nonobvious the claims of U.S. Patent No. 7,772,209 (the “’209 Patent”), which are directed to a method of treating cancer.

The Patent Trial and Appeal Board (the “Board”) issued a final written decision in an inter partes review determining Claims 1-5 of U.S. Patent No. 8,889,135 owned by Abbvie Biotechnology Ltd. unpatentable as obvious. Those claims cover methods of treating rheumatoid arthritis by administering—once every 13-15 days (i.e., biweekly) for a time period sufficient to treat the rheumatoid arthritis—40 mg of an antibody having certain sequences. The antibody D2E7, the active ingredient in Humira, is an antibody used in such a dosing regimen. The Board concluded that the challenged claims would have been obvious in light of two prior art references – van de Putte 2000 and Rau 2000 – which each described the results of clinical trials using D2E7.

In a consolidated Hatch-Waxman patent infringement action, a district court judge in Delaware recently found claims directed to a treatment for multiple sclerosis invalid as obvious.

In a final written decision, the Patent Trial and Appeal Board (PTAB) found that claims 1-20 of U.S. Patent No. 8,550,271 (the “’271 patent”) were not unpatentable because “compelling evidence of secondary considerations of non-obviousness” outweighed the evidence of obviousness. World Bottling Cap LLC (“Petitioner”) filed inter partes review petitions of Crown Packaging Technology Inc.’s (“Patent Owner”) ’271 patent, which covers a bottle cap requiring less material than caps in the prior art by using a harder steel that allows for a thinner cap.

A PTAB panel has rejected a patent owner’s evidence of objective indicia of non-obviousness because it lacked the proper nexus with the claimed subject matter. In its brief, the patent owner had argued that praise by others, particularly a competitor, is evidence of non-obviousness. According to the Board, however, the magazine article offered as evidence by the patent owner did not establish a specific nexus between the laudatory comments in the magazine and the claimed subject matter. Instead, the Board interpreted those comments as referring more generally to the patent owner’s technology and vision, and not necessarily to the claimed subject matter. The Board also rejected the patent owner’s arguments that the success of certain commercial devices was evidence of non-obviousness because that success alone did not establish the requisite nexus. According to the Board, the patent owner’s argument was predicated on the assumption that the commercial products implemented the features of the subject patent claims. The Board explained, however, that where the patent is said to cover a feature or component of a product, the patent owner has the burden of showing that the commercial success derives from the claimed features. In this case, the Board determined that the patent owner had failed to address numerous other features cited as important to the commercial success of the product. The Board also contrasted the expert declaration of the patent owner’s technical expert with that of the petitioner’s expert in marketing and consumer behavior. The latter testified that the success was due to numerous factors, including promotions and price. In light of all the evidence presented, the Board found that the objective indicia cited by the patent owner did not overcome the case of obviousness established by the petitioner by a preponderance of the evidence.