Amgen Inc. v. Sanofi (No. 2017-1480, 10/5/17) (Prost, Taranto, Hughes)

October 5, 2017 3:51 PM

Prost, J. Reversing-in-part and remanding for new trial on written description and enablement. Also affirming JMOL of non-obviousness and vacating injunction. “[T]he use of post-priority-date evidence to show that a patent does not disclose a representative number of species of a claimed genus is proper. It was this legal error for the district court to categorically preclude all of Appellants' post-priority-date evidence of [the accused product] and other antibodies. Accordingly, we reverse the district court's decision and remand for a new trial on written description.” The Court also found a jury instruction regarding written description to be improper.

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Aqua Products, Inc. v. Matal (No. 2015-1177, 10/4/17) (Prost, Newman, Lourie, Dyk, Moore, O'Malley, Reyna, Wallach, Taranto, Chen, Hughes)

October 4, 2017 12:36 PM

O'Malley, J. Vacating prior panel decision and remanding for the Board to assess the patentability of proposed substitute claims without placing the burden of persuasion on the patent owner. “Upon review of the statutory scheme, we believe that § 316(e) unambiguously requires the petitioner to prove all propositions of unpatentability, including for amended claims. This conclusion is dictated by the plain language of § 316(e), is supported by the entirety of the statutory scheme of which it is a part, and is reaffirmed by reference to relevant legislative history. Because a majority of the judges participating in this en banc proceeding believe the statute is ambiguous on this point, we conclude in the alternative that there is no interpretation of the statute by the Director of the Patent and Trademark Office (“PTO”) to which this court must defer under Chevron, U.SA. Inc. v. Natural Resources Defense Council, Inc. [citation omitted]. And we believe that, in the absence of any required deference, the most reasonable reading of the AIA is one that places the burden of persuasion with respect to the patentability of amended claims on the petitioner. [footnote overruling prior decisions omitted] Finally, we believe that the Board must consider the entirety of the record before it when assessing the patentability of amended claims under § 316(e) and must justify any conclusions of unpatentability with respect to amended claims based on that record… The only legal conclusions that support and define the judgment of the court are: (1) the PTO has not adopted a rule placing the burden of persuasion with respect to the patentability of amended claims on the patent owner that is entitled to deference; and (2) in the absence of anything that might be entitled to deference, the PTO may not place that burden on the patentee.”

Separate opinions filed by Judges Moore and Reyna. Dissenting opinions filed by Judges Taranto and Hughes.

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