Digest of South Alabama Medical Science Foundation, v. Gnosis S.P.A., No. 2014-1778, -1780, -1781 (Fed. Cir. Dec. 17, 2015) (precedential). On appeal from the P.T.A.B. Before Newman, Plager and Hughes.

Procedural Posture: Patentee appealed the Board’s IPR-decisions finding claims invalid for obviousness. CAFC affirmed.

  • Obviousness: Substantial evidence supported the Board’s finding that the claims, related to administering the “natural” stereoisomer of 5-methyl-tetrahydrofolic acid (L-5-MTHF), would have been obvious. For the same reasons discussed in Merck & Cie. V. Gnosis S.p.A., decided the same day, a person of ordinary skill would have been motivated to combine certain prior art references to arrive at the contested claims, and the prior art as a whole did not teach away from combining them.
  • Objective Indicia of Non-Obviousness: Substantial evidence supported the Board’s finding that patentee’s evidence of commercial success and industry praise was not closely tied to the allegedly novel features of the claimed invention. However, the Board erred by discounting the licenses under the patent on the ground that the patentee failed to show a nexus between the claimed inventions and a sublicensee’s products. The relevant inquiry is whether there is a nexus between the patent and the licensing activity itself, such that the factfinder can infer that the licensing arose out of recognition and acceptance of the subject matter claimed in the patent. Nevertheless, the Board’s error in considering the evidence of licensing was harmless, since even if correctly considered, it would not have been enough to overcome the strong evidence of obviousness found in the prior art and the expert testimony.
  • Dissenting opinion (Newman): For the same reasons discussed in Merck & Cie. V. Gnosis S.p.A., decided the same day, obviousness was not established by a preponderance of the evidence.