In Merck & CIE v. Gnosis S.P.A., Gnosis Bioresearch S.A., Gnosis U.S.A. Inc., Case No. 2014-1779 (Fed. Cir. Dec. 17, 2015), the Federal Circuit affirmed the Board’s decision that the contested claims were invalid for obviousness, determining that the Board’s factual findings were supported by substantial evidence, and agreeing with the Board’s conclusion of obviousness. However, in dissent, Judge Newman asserted that the Federal Circuit’s substantial evidence standard of review for the Board’s factual findings in AIA trial decisions is not appropriate under the AIA, and that based on a review without deference, the Board’s decision in this case should be reversed.
Continue Reading Dissent: “Deferential review by the Federal Circuit falls short”
In what appears to be only the second instance¹ to date, evidence of secondary considerations helped a Patent Owner defend against a Petitioner’s obviousness challenge during an IPR proceeding. In Phigenix, Inc. v. Immunogen, Inc., the Board issued its final written decision and held that each of the eight challenged claims were not unpatentable, finding the Patent Owner “advances persuasive evidence” regarding the prior failure of others and the long-felt need in the industry. Phigenix, Inc. v. Immunogen, Inc., IPR2014-00676, 
art patent is entitled to the filing date of its provisional application—by demonstrating that the claims of the reference patent are supported by the provisional application.
In a rare event, the PTAB recently changed one of its decisions denying institution of inter partes review of a claim. That change was prompted by the IPR-petitioner’s request for rehearing on the PTAB’s original institution decision in Apple Inc. et al. v. Memory Integrity, LLC, IPR2015-00163. Decision on Institution (Paper 18, “Orig. Dec.”); Request for Rehearing (Paper 20, “Req. Reh’g”); Decision on Request for Rehearing (Paper 22, “Dec.”). A search of Docket Navigator reveals that fewer than one in five such requests for rehearing are granted.