The United States Court of Appeals for the Federal Circuit recently issued an opinion in Novartis AG v. Noven Pharmaceuticals, Inc., which affirmed the Patent Trial and Appeal Board (PTAB) invalidation of claims in related inter partes review (IPR) proceedings. The IPRs related to U.S. Patent No. 6,316,023 and U.S. Patent No. 6,335,031.
Patent owners losing claims and the Federal Circuit rubber stamping the PTAB isn’t news, sadly. What makes this case different, however, is that these very same patents were previously litigated and the claims were found to be nonobvious in federal district court.
Novartis argued to the Federal Circuit that the arguments presented to the PTAB by Noven, as well as the prior art submitted to support those arguments, were the same as considered during litigation in federal court. The Federal Circuit disagreed, finding that the record in federal court was not identical to the record at the PTAB. But the Federal Circuit went further, saying that even if the records were identical, Novartis’ argument would have to fail.
Judge Wallach, who was joined by Chief Judge Prost and Judge Stoll in this decision, wrote:
[E]ven if the record were the same, Novartis’s argument would fail as a matter of law. The PTAB determined that a “petitioner in an inter partes review proves unpatentability by a preponderance of the evidence (see 35 U.S.C. § 316(e)) rather than by clear and convincing evidence[] as required in district court litigation,” meaning that the PTAB properly may reach a different conclusion based on the same evidence. Noven II, 2015 WL 5782081, at *2 (italics omitted). That position comports with recent Supreme Court precedent…
Wallach went on to quote a passage from Cuozzo Speed Technologies, LLC v. Lee, acknowledging that it is entirely possible that a district court may find a patent claim to be valid but that the USPTO may later cancel the claim on its own review. That is the problem when you have different standards applied by decision makers reviewing the same legal question. In the district courts, the Phillips standard, which provides a “correct” claim construction, is mandated. See PPC Broadband, Inc. v. Corning Optical Communications RF, LLC at 7.
At the PTAB the broadest reasonable interpretation (BRI) of a claim is used as if the claim had never been previously examined and issued, and the PTAB does not presume the patent is valid despite there being no apparent statutory authority for the PTAB to ignore the presumption of validity. Indeed, 35 U.S.C. 282 says: “A patent shall be presumed valid.” Interestingly, § 282 does not say that the presumption is voided in proceedings at the PTAB, but the PTAB (and apparently the USPTO) do not think patents are required to be presumed valid at the PTAB. Shockingly, the Federal Circuit agrees.
Tags: CAFC, Federal Circuit, patent, patents, PTAB
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