{"id":974,"date":"2016-06-14T18:35:52","date_gmt":"2016-06-14T22:35:52","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=974"},"modified":"2016-06-15T22:56:46","modified_gmt":"2016-06-16T02:56:46","slug":"board-not-limited-to-prior-art-in-the-grounds-as-long-as-patent-owner-had-notice","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=974","title":{"rendered":"Board Not Limited to Prior Art in the Grounds, as Long as Patent Owner Had Notice"},"content":{"rendered":"<p>In <em>Genzyme Therapeutic Products Limited v. Biomarin Pharmaceutical, Inc.<\/em>, [2015-1720, 2015-1721](June 14, 2016), the Federal Circuit affirmed the PTAB&#8217;s decisions in\u00a0IPR2013-00534 and IPR2013-00537 that certain claims of \u00a0U.S. Patent No.\u00a07,351,410 and U.S. Patent No.\u00a07,655,226 were invalid for obviousness.<\/p>\n<p>Genzyme\u2019s APA challenged the result under the Administrative Procedures Act because the Board cited references in its final written decisions\u00a0that were not specifically included in the combinations of prior art on which the Board instituted review. \u00a0The Federal Circuit was unmoved, explaining\u00a0that the introduction\u00a0of new evidence in the course of the trial is to be expected\u00a0in inter partes review trial proceedings and, as long as the\u00a0opposing party is given notice of the evidence and an\u00a0opportunity to respond to it, the introduction of such\u00a0evidence is perfectly permissible under the APA.<\/p>\n<p>The Federal Circuit\u00a0said that Genzyme&#8217;s argument reflected a misunderstanding<br \/>\nof the role of the institution decision in inter\u00a0partes review proceedings before the Board. There is no\u00a0requirement, either in the Board\u2019s regulations, in the\u00a0APA, or as a matter of due process, for the institution\u00a0decision to anticipate and set forth every legal or factual<br \/>\nissue that might arise in the course of the trial. \u00a0The critical question for compliance with the APA and\u00a0due process is whether Genzyme received \u201cadequate\u00a0notice of the issues that would be considered, and ultimately\u00a0resolved, at that hearing.\u201d Ultimately the Federal Circuit blamed Genzyme for not either moving to exclude the added references or seeking leave to file a surreply.<\/p>\n<p>The Federal Circuit held in <em>Ariosa<\/em>\u00a0that the Board may consider\u00a0a prior art reference to show the state of the art at the\u00a0time of the invention, regardless of whether that reference\u00a0was cited in the Board\u2019s institution decision, and that is how the Board used the contested references.<\/p>\n<p>&nbsp;<\/p>\n","protected":false},"excerpt":{"rendered":"<p>In Genzyme Therapeutic Products Limited v. Biomarin Pharmaceutical, Inc., [2015-1720, 2015-1721](June 14, 2016), the Federal Circuit affirmed the PTAB&#8217;s decisions in\u00a0IPR2013-00534 and IPR2013-00537 that certain claims of \u00a0U.S. Patent No.\u00a07,351,410 and U.S. Patent No.\u00a07,655,226 were invalid for obviousness. Genzyme\u2019s APA &hellip; <a href=\"https:\/\/patents.harnessip.com\/?p=974\">Continue reading <span class=\"meta-nav\">&rarr;<\/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":[26],"tags":[],"class_list":["post-974","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/974","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=974"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/974\/revisions"}],"predecessor-version":[{"id":975,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/974\/revisions\/975"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=974"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=974"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=974"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}