IP Newsflash

On remand from the Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board granted patent owner’s motion to amend on the basis that the totality of the record did not demonstrate by a preponderance of the evidence that patent owner’s proposed substitute claims were unpatentable.

On May 14, 2018, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (the “Board”) Final Written Decision in an inter partes review (IPR) proceeding holding all claims of Anacor Pharmaceuticals, Inc.’s (“Anacor”) U.S. Patent No. 7,582,621 unpatentable for obviousness. The single claim addressed on appeal related to a method of using an oxaborole known as “tavaborole” to treat onchomycosis (a nail infection) caused by a dermatophyte. Dermatophytes are a type of fungus responsible for 90 percent of all cases of onchomycosis.

The Patent Trial and Appeal Board (PTAB or “Board”) granted a petitioner’s request for rehearing and modified its Final Written Decision finding an additional claim unpatentable. Previously, the PTAB issued a Final Written Decision holding that the petitioner demonstrated by a preponderance of the evidence that Claims 1, 4, 10 and 11 of U.S. Patent No. 6,026,059 (related to generating a bin of traces from seismic survey data) were unpatentable as anticipated by the prior art. The petitioner, however, failed to meet the evidentiary standard for finding Claims 2, 3 and 5 unpatentable. The petitioner filed a request for rehearing, challenging the Board’s determination regarding Claim 2 of the challenged patent.

In a final written decision, the Patent Trial and Appeal Board (PTAB) found that claims 1-20 of U.S. Patent No. 8,550,271 (the “’271 patent”) were not unpatentable because “compelling evidence of secondary considerations of non-obviousness” outweighed the evidence of obviousness. World Bottling Cap LLC (“Petitioner”) filed inter partes review petitions of Crown Packaging Technology Inc.’s (“Patent Owner”) ’271 patent, which covers a bottle cap requiring less material than caps in the prior art by using a harder steel that allows for a thinner cap.

In a rare complete reversal of the Patent Trial and Appeal Board, the Federal Circuit held that the Board clearly erred in shifting the burden of proving obviousness to the patent owner. McClinton had filed a petition for inter partes review against Magnum's patent relating to hydraulic fracturing (fracking). The Board found that the patent was invalid for obviousness based on three references. 

In a July 7 final written decision, the Patent Trial and Appeal Board (PTAB) found all but one claim of a Mallinckrodt Hospital Products patent—U.S. Patent No. 8,846,112—unpatentable under 35 U.S.C. §§ 102(a) and 103(a). The ’112 Patent is directed to “methods of distributing a pharmaceutical product comprising nitric oxide gas.”