Patent Law Practice Center

CAFC Sends Dismissed Interference Back to Board

The United States Court of Appeals for the Federal Circuit recently decided a case arising out of an interference proceeding before the Patent Trial and Appeal Board (PTAB) relating to drug treatments for spinal nerve injuries. See Tobinick v. Olmarker (Fed. Cir., May 19, 2014).

Kjell Olmarker and Bjorn Rydevik (collectively “Olmarker”) are the named inventors on U.S. Patent Nos. 7,708,995 and 7,811,990. In order to provoke an interference, Edward Tobinick copied claims from the ‘995 patent and the ‘990 patent into his patent application.

In the USPTO proceeding, the Board construed “administered locally” as administering the claimed therapeutic compound “directly to the site where it is intended to act, that is, to the location where the nucleus pulposus is causing the symptoms of the nerve disorder.” Based on this construction, the Board found that Edward Tobinick’s patent application did not contain written description support for the interference count. Therefore, without written description support for the count, the Board concluded that Tobinick lacked standing for the interference proceeding, and dismissed the interference.

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Federal Circuit: Foreign Application Not Priority in Interference When it Only “Envisions” Invention

Written by Gene Quinn (of IPWatchdog and Practice Center Contributor)

Last week the United States Court of Appeals for the Federal Circuit issued a ruling in Goeddel v. Sugano, which might be one of a dying breed should patent reform actually pass.  The case dealt with an appeal from an interference proceeding where the Board awarded priority based on a Japanese application.  The Federal Circuit, per Judge Newman, explained that it was inappropriate to say that the Japanese application demonstrated a constructive reduction to practice because the application merely would allow the skilled reader to “envision” the invention covered in the interference count.  If patent reform passes (and yes that could really happen) cases like Goeddel would become a thing of the past, although priority determinations like this one in Goeddel will certainly not go away.

Goeddel was a consolidated appeal from two decisions of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office in two related patent interference priority contests between the party Haruo Sugano, Masami Muramatsu, and Tadatsugu Taniguchi (together “Sugano”) and the party David V. Goeddel and Roberto Crea (together “Goeddel”).  The Board held that Sugano is entitled to the benefit of the filing date of its initial Japanese application, and awarded Sugano priority as to the counts of both interferences. (more…)