Different Burdens of Proof and Different Records Allowed Different Conclusions on Validity by the PTAB and District Court

Author: Paula E. Miller  
Editor: Jeff T. Watson

In Novartis AG v. Noven Pharmaceuticals Inc., Nos. 16-1678, -1679 (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed the PTAB’s decisions finding obvious certain patents that were previously found nonobvious in district court.

Noven filed IPR petitions relating to patents directed to a pharmaceutical composition for the treatment of Alzheimer’s disease. Although prior district court decisions found certain claims of those patents nonobvious, the PTAB held that those claims would have been obvious.  Novartis appealed, alleging that the PTAB improperly reached a different conclusion than the district court and Federal Circuit in prior litigations.

On appeal, the Federal Circuit noted that the record before the PTAB in this matter differed from that in the prior litigations, explaining that “[t]t is unsurprising that different records may lead to different findings and conclusions.” The Court further explained that the different burdens of proof—“preponderance of the evidence” at the PTAB and “clear and convincing” at the district court—allowed in this case for different conclusions by the PTAB and district court. Although the Federal Circuit stated in a prior decision that the USPTO “ideally should not arrive at a different conclusion” if it faces the same evidence and argument as a district court, the Court explained in this case that this is an aspiration—not a mandate—as Congress authorized a separate review mechanism before the USPTO with its own standard. Accordingly, the Court affirmed the PTAB’s findings of obviousness.

Finally, the Court upheld the district court’s assessment of prejudgment interest based on the entire royalty award predicated on a hypothetical negotiation in 2006. While only one patent had issued by 2006, both parties’ experts agreed that any damages should be a lump sum royalty running from the earliest hypothetical negotiation and would have included the issuance of any later patent, effectively treating the three patents as a “unitary licensing property.”

 

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

Tagged ,

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: