Federal Circuit Summaries

Before Reyna, Bryson, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: A petitioner in an Inter Partes Review may introduce new evidence not included in its petition if: 1) the evidence is a reply to evidence introduced by the patent owner or 2) the evidence documents the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.

Coalition for Affordable Drugs X LLC (“the Coalition”) petitioned for an Inter Partes Review of a patent owned by Anacor Pharmaceuticals (“Anacor”). The Board held all of Anacor’s claims unpatentable for obviousness. In its final written decision, the Board cited two references that were not cited in the Coalition’s petition.

On appeal, Anacor argued that the Board violated due process and the procedural requirements of the Administrative Procedure Act (“APA”) by failing to provide Anacor with adequate notice of, and an opportunity to respond to, a new theory of obviousness and new evidence not presented in the petition. The Federal Circuit found that Anacor was not denied its procedural rights with respect to the theory of obviousness adopted by the Board because the final written decision was based on the same combination of primary references and the same series of inferences that the petition proposed. The Federal Circuit observed that there is “no blanket prohibition against the introduction of new evidence during an inter partes review proceeding” and held Anacor had sufficient notice and opportunity to respond to the additional references. The Federal Circuit further observed, citing its prior decision in Genzyme, that a petitioner may introduce new evidence following the inter partes review petition stage if it is a legitimate reply to evidence introduced by the patent owner or if it is employed “to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.”

This case is: ANACOR PHARMACEUTICALS, INC. v. IANCU

Written by: Marc Chatenay-Lapointe, Ph.D. and Christie Matthaei

Edited by: Paul Stewart