Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc. (No. 2017-2078, -2134, 9/10/18) (Newman, Dyk, Taranto)

Taranto, J. Affirming district court judgment that claims directed to dosing of drug to treat multiple sclerosis were obvious. The prior art did not teach away and would have led to a reasonable expectation that the claimed dosing method would be efficacious. Pharmacokinetic limitations of the claims were inherent in the claimed method. The district court did not clearly err in discounting evidence of commercial success in light of a blocking patent. Newman, J., dissented.

A full version of the text is available in PDF form.

University of California v. Broad Institute, Inc. (No. 2017-1907, 9/10/18) (Prost, Schall, Moore)

Moore, J. Affirming Board's finding that there was no interference-in-fact between patents and patent applications directed to gene editing. Substantial evidence supported Board's finding that there was no reasonable expectation that method of UC's application would work in eukaryotic cells as claimed by Broad Institute and therefore claims were not obvious in light of UC's invention. The Board considered fact of simultaneous invention and did not err in finding that it was insufficient to find non-obviousness.

A full version of the text is available in PDF form.

IXI IP, LLC v. Samsung Electronics Co., Ltd. (No. 2017-1665, 9/10/18) (O'Malley, Mayer, Reyna)

Reyna, J. Affirming IPR decision that claims directed to wireless devices were obvious.

A full version of the text is available in PDF form.

Orexo AB v. Actavis Elizabeth LLC (No. 2017-1333, 9/10/18) (Newman, Hughes, Stoll)

Newman, J. Reversing holding that patent direct to formulation of drug for treating opioid abuse was obvious where record did not contain clear and convincing evidence of a teaching or suggestion to use one of the components of the formulation or that it would produce beneficial results. Enhanced bioavailability of the formulation was one of kind, not degree, and showed non-obviousness as an unexpected result.

A full version of the text is available in PDF form.

Worlds Inc v. Bungie, Inc. (No. 2017-1481, -1546, -1583, 9/7/18) (Prost, O'Malley, Taranto)

Prost, J. In IPR, vacating Board's decision based on erroneous real-party-in-interest analysis. In determining whether a petition is time-barred based on service of a complaint served on an alleged real-party-in-interest, petitioner bears the ultimate burden of persuasion. Although there is no presumption that the identification by the petitioner of the real-party-in-interest is correct, it should be accepted unless disputed by the Patent Owner with "some evidence that tends to show that a particular third party should be named." The Court also remanded for determination of whether earlier, non-appealed, IPRs rejecting Patent Owner's arguments regarding the real-party-in-interest estopped patent owner based on issue preclusion.

A full version of the text is available in PDF form.

Intellectual Ventures I LLC v. T-Mobile USA, Inc. (No. 2017-2434, -2435, 9/4/18) (Prost, Moore, Reyna)

Bryson, J. Denying petitions for a writ of mandamus challenging the PTAB's denial of institution of four IPRs on the ground that the petitioner had not shown that the cited prior art was publicly accessible before the patents' priority date. The Court explained that the PTAB's decisions regarding whether to institute IPRs are not appealable under 35 U.S.C. § 314(d), and a writ of mandamus is not a valid alternative means of challenging the denial of an IPR.

A full version of the text is available in PDF form.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.