CASE OF THE WEEK

In re: John L. Couvaras, Appeal No. 2022-1489 (Fed. Cir. June 14, 2023)

In our Case of the Week, the Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeals Board decision that a patent application’s claims drawn to a hypertension treatment were obvious. The pending claims recited a method for increasing prostacyclin release in human blood cells with hypertension, by co-administering two well-known antihypertensive agents: a GABA-a agonist and an Angiotensin II Receptor Blocker (“ARB”). During prosecution, the applicant conceded that GABA-a agonists and ARBs “have been known as essential hypertension treatments for many, many decades.” The examiner also cited ten references establishing that GABA-a agonists and ARBs treat hypertension, and found that the claimed results of co-administering the two was unpatentable, because that claimed result—treating hypertension—naturally flowed from the claimed administration of the two antihypertensive agents. On appeal to the Board, the applicant argued that objective indicia of non-obviousness overcame any prima facie case of obviousness. The Board, however, agreed with the examiner that the claimed result was inherent in the co-administration of the two antihypertensive agents, and that there was no evidence to support a finding of any objective indicia.

ALSO THIS WEEK

Parus Holdings, Inc. v. Google LLC, Appeal Nos. 2022-1269, -1270 (Fed. Cir. June 12, 2023)

In an appeal from a Patent Trial and Appeal Board decision finding claims from two patents invalid as obvious, the Federal Circuit affirmed. At issue was primarily whether two publications constituted prior art under pre-AIA section 102. Parus argued that it could pre-date one of the prior art references by showing prior conception and reduction to practice of its claimed invention. However, to make its case, Parus relied on approximately 40 exhibits plus a number of claimed charts totaling more than 100 pages that it incorporated by reference into its briefs, but did not otherwise include or argue in its brief with “meaningful explanation.” The Board declined to consider those arguments, consistent with its regulations prohibiting parties from incorporating arguments into their briefs by reference. The Federal Circuit affirmed, finding no abuse of discretion and further finding that the Board’s decision did not violate the Administrative Procedures Act or the Patent Act. Parus argued that a second prior art reference was not prior art, but was rather an application to which the patent claimed priority. The Board found a lack of written description support for all of the challenged claims in that application, and therefore considered it prior art. The Federal Circuit agreed with the Board’s assessment. The Court also reaffirmed its prior holding that arguments made in a preliminary response but not included in the response itself are waived. With those two references treated as prior art, the Federal Circuit affirmed that the patent claims were invalid as obvious.

The opinion can be found here.

Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C.

Jason A. Wrubleski, Shareholder

Contributors:

Tyler Hall