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Differing burdens of proof in the PTAB and district courts can allow patent challengers a second bite at the apple

The different burdens of proof in the Patent Trial and Appeal Board (PTAB) and in district court means that the PTAB may find patent claims unpatentable even after the claims were held valid over the same evidence in litigation. Novartis AG v. Noven Pharm. Inc., No. 2016-1678, 2016-1679 (April 4, 2017).

In two separate Inter Partes Review (IPR) proceedings, the PTAB found the asserted claims of Novartis?ÇÖs U.S. Patent Nos. 6,316,023 and 6,335,031 unpatentable for obviousness over various combinations of prior art references. Novartis, No. 2016-1678, 2016-1679 at 2, 4. However, those same claims had previously been litigated in the U.S. District Court for the District of Delaware. Id. at 6. Based on the ?Ç£same?Ç¥ arguments and the ?Ç£same?Ç¥ evidence considered by the PTAB, the Delaware District Court held the claims not obvious, and the Federal Circuit affirmed the court. Id.; Novartis Pharm. Corp. v. Watson Labs., Inc., 611 F. App?ÇÖx 988 (Fed. Cir. 2015); Novartis Pharm. Corp. v. Noven Pharm., Inc., 125 F. Supp. 3d 474 (D. Del. 2015).

Federal Circuit clarifies limited exception to the presumption that ?Çÿconsisting of?ÇÖ is a closed term

Federal Circuit clarifies limited exception to the presumption that ?Çÿconsisting of?ÇÖ is a closed term

In the case of a claim directed to a composition ?Ç£consisting of?Ç¥ substances selected from a Markush group, when is the presence of an unclaimed ingredient sufficiently unrelated to the invention to preclude infringement??á The Federal Circuit recently addressed this question in Shire Dev., LLC v. Watson Pharm., Inc., No. 2016-1785 (Fed. Cir. February 10, 2017).?á The Federal Circuit reversed the district court?ÇÖs finding of infringement because the accused product did not satisfy the claimed Markush group requirements.?á Shire, No. 2016-1785 at 2.?á Specifically, the Court found that the accused product containing an ingredient not listed in the claimed Markush group did not infringe where that additional ingredient structurally and functionally related to the invention.?á Id. at 7-9. The asserted claims of U.S. Patent No. 6,773,720 require a controlled-release oral pharmaceutical composition including a specific active ingredient; an inner, lipophilic matrix; an outer, hydrophilic matrix; and other excipients.?á Id. at… Continue Reading

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