Digest of Merck & CIE v. Gnosis, S.P.A., No. 2014-1779 (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-decision finding claims invalid for obviousness. CAFC affirmed.

  • Obviousness: Substantial evidence supported the Board’s finding that the claimed method of treating elevated levels of homocysteine would have been obvious. 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. Further, Merck’s evidence of objective indicia of non-obviousness was not closely tied to the allegedly novel features of the claimed invention.
  • Dissenting opinion (Newman): It is incorrect for the court, as the only reviewing tribunal, to review the PTAB decision under the highly deferential “substantial evidence” standard, instead of assuring that the PTAB’s factual findings are supported by the preponderance of evidence, as the statute requires. Here, obviousness was not established by a preponderance of the evidence.