NOVARTIS AG, LTS LOHMANN THERAPIESYSTEME AG, v. NOVEN PHARMACEUTICALS INC.,: Apr. 4, 2017. Before Prost, Wallach, and Stoll

Takeaways:

• Because of the different burdens, the PTAB may properly reach a different IPR conclusion than a prior district court based on the same evidence.

• Chemical claims are obvious where a skilled artisan would have been motivated to anticipate the problem solved by the invention, and thus to combine the references.

Procedural Posture:

The PTAB found that various asserted claims, directed to a pharmaceutical composition, would have been obvious despite that prior judicial opinions held them nonobvious. Novartis appealed. The CAFC affirmed.

Synopsis:

• Inter Partes Review: It was not error to conclude that prior judicial opinions did not bind the PTAB. The record at the PTAB differed from that in the prior litigation. The parties presented additional evidence at the PTAB that was not before the district court. Even if the records were the same, Novartis’s argument would fail as a matter of law. The PTAB determines that a petitioner proves unpatentability in an IPR by a preponderance of the evidence, rather than by clear and convincing evidence as required in district court litigation. So the PTAB properly may reach a different conclusion than in the district court based on the same evidence

• Obviousness: The PTAB did not err in finding the claims obvious. The Board’s factual findings were supported by substantial evidence. Novartis argued that there was no motivation to combine because the ordinary artisan was not aware of the problem (oxidative degradation). The Board, however, found that the ordinary artisan, based on organic chemistry principles, would have recognized the degradative potential of the chemical compound based on its chemical structure. In recognizing this problem, the ordinary artisan would have combined the references.