Case: Leo Pharm Prods Ltd v. Rea, No. 2012-1520 (Fed. Cir. Aug. 12, 2013) (precedential). On appeal from Board of Patent Appeals and Interferences. Before Rader, O’Malley, and Reyna.
Procedural Posture: Appeal by patent owner from final decision in an inter partes reexamination that patent was invalid. CAFC reversed.
- Reissue/Reexamination: During inter partes reexamination, objective indicia of nonobviousness should be given their proper weight in the obviousness analysis and should not be treated as an afterthought. In this case, the objective indicia was the most probative evidence of nonobviousness and avoided the trap of hindsight of combining known elements.
- Claim Construction: The USPTO must give claims their broadest reasonable construction. The Board of Patent Appeals and Interferences’s (the “Board”) construction of “storage stable” was impermissibly narrow because the Board only considered one example disclosed in the patent. The plain meaning of the term is broader. The Federal Circuit therefore vacated the Board’s construction but declined to adopt an alternative construction, as it was unnecessary to resolve the appeal.
- Obviousness: The patent owner presented extensive evidence of unexpected results, commercial success, and long felt but unresolved need. Patent owner presented experimental evidence to the Board that methods of combining two drugs in the prior art led to unstable compositions. The lack of stability was not recognized as a problem for more than a decade. The Board also incorrectly found that it would have been obvious to try to combine more than eight classes of additives with more than ten categories of compounds. There was no indication in the prior art which of many possible formulations would have been the most promising to try, and one skilled in the art could have spent years experimenting without success.