{"id":1500,"date":"2017-04-12T23:21:14","date_gmt":"2017-04-13T03:21:14","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1500"},"modified":"2017-04-12T23:21:14","modified_gmt":"2017-04-13T03:21:14","slug":"just-because-the-board-didnt-say-it-doesnt-mean-that-the-board-didnt-think-it","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1500","title":{"rendered":"Just Because the Board Didn’t Say It; Doesn’t Mean that the Board Didn’t Think It"},"content":{"rendered":"

In Novartis AG v. Torrent Pharmaceuticals Limited<\/em>, [2016-1352] (April 12, 2017), the Federal Circuit affirmed the PTAB’s determination that the challenged claims of U.S. Patent No.\u00a08,324,283, and Novaritis’ proposed substitute claims, were unpatentable as obvious.<\/p>\n

On appeal, Novaritis that it was denied due process under the APA when the the Board used a reference that it rejected as being anticipatory in the institution decision,\u00a0as\u00a0additional evidence of the reason to combine.<\/p>\n

The Federal Circuit noted that under the APA, and an agency
\nmay not change theories in midstream without giving\u00a0respondents reasonable notice of the change and \u2018the\u00a0opportunity to present argument under the new theory. \u00a0The Federal Circuit disagreed that\u00a0the Board ruled\u00a0the reference\u00a0out of the case entirely in the Institution Decision. \u00a0Th Federal Circuit said that the Board merely used the reference to reinforce its finding of obviousness, and that the Board\u2019s discussion of the reference in the Final Written Decision was not inconsistent with\u00a0its review of the reference in the Institution Decision. \u00a0The Federal Circuit further noted that the parties debated the reference at\u00a0length throughout the proceeding and in the same context\u00a0that it was discussed by the Board in the Final Written
\nDecision. \u00a0The Federal Circuit concluded that\u00a0it is quite clear that
\nNovartis had more than sufficient notice and opportunity\u00a0to be heard the reference’s potential relevance, and in fact\u00a0actively and repeatedly attempted to distinguish the reference\u00a0to\u00a0defeat the very argument relied on by the Board in the\u00a0Final Written Decision.<\/p>\n

Novartis also argued that the Board further erred in its\u00a0motivation to combine analysis because it failed to read\u00a0the prior art as a whole and overlooked critical evidence of\u00a0the combination’s\u00a0known disadvantages. \u00a0Where the prior art\u00a0contains apparently conflicting teachings (i.e., where\u00a0some references teach the combination and others teach\u00a0away from it) each reference must be considered for its
\npower to suggest solutions to an artisan of ordinary skill, considering the degree to which one reference might\u00a0accurately discredit another. \u00a0The Federal Circuit\u00a0noted that\u00a0the Board expressly discussed\u00a0the negative properties in the Final Written\u00a0Decision, and noted that, despite this potentially\u00a0discouraging characteristic, it was still commonly\u00a0used. \u00a0In the end, the Federal Circuit was not persuaded that Novartis\u00a0presented its arguments\u00a0in such a way that it would be appropriate to find fault\u00a0in the Board\u2019s arguably limited treatment of those arguments\u00a0in the Final Written Decision.<\/p>\n

Although the prior\u00a0art must be considered as a whole and the disadvantages\u00a0of a reference must be considered in addition to the benefits,\u00a0there is no requirement that the\u00a0Board expressly discuss each and every negative and positive piece of evidence lurking in the record to evaluate\u00a0a cursory argument. Given that the Board cited to the\u00a0relevant pages of Novartis\u2019 Patent Owner Response, we\u00a0find no reason to assume the Board failed to consider\u00a0the\u00a0cited negatives simply because they were not\u00a0recited at length in the Board\u2019s Final Written Decision.<\/p>\n

With respect of objective indicia of non-obviousness, \u00a0the Board\u00a0rejected Novaritis argument of unexpected results because it was not commensurate with the\u00a0scope of the claims. \u00a0On appeal Novaritis argued that the evidence nonetheless applied to the narrower dependent claims, but the Federal Circuit found that Novaritis did not separately argue the dependent claims, and therefore waived the argument.<\/p>\n

Novaritis further argued that the invention enjoyed commercial success, industry praise, and\u00a0met a long-felt but previously unsolved need. \u00a0For objective indicia evidence to be accorded\u00a0substantial weight, a nexus must exist\u00a0between the evidence and the merits of the claimed\u00a0invention. \u00a0Where the objective indicia\u00a0actually results from something other than\u00a0what is both claimed and novel in the claim, there is no\u00a0nexus to the merits of the claimed invention. \u00a0The Federal Circuit agreed that\u00a0Novartis\u2019\u00a0proffered evidence is not probative of the
\nnonobviousness inquiry, because other products were known with the same feature, even though had not yet been approved by the FDA.<\/p>\n

 <\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Novartis AG v. Torrent Pharmaceuticals Limited, [2016-1352] (April 12, 2017), the Federal Circuit affirmed the PTAB’s determination that the challenged claims of U.S. Patent No.\u00a08,324,283, and Novaritis’ proposed substitute claims, were unpatentable as obvious. On appeal, Novaritis that it … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[54,53,12],"tags":[],"class_list":["post-1500","post","type-post","status-publish","format-standard","hentry","category-motivation-to-combine","category-objective-indicia","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1500","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1500"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1500\/revisions"}],"predecessor-version":[{"id":1501,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1500\/revisions\/1501"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1500"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1500"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1500"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}