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« Netsirv v. Boxbee, Inc. (PTAB 2016) | Main | Webinar on Patent Eligibility »

August 18, 2016


Likely due to constraining his opinion to a field that he is more knowledgeable of, our "amorphous" friend here of a thousand monikers (while decrying sockpuppets, and eschewing any "battle of transparencies), discusses this case intelligently (or at least with minimal snark) at:


This article's focus on deference aside, looking at the plain facts of the matter, it is difficult to reconcile the view of the court below on the factual matters which underpin the de novo legal review.

Sometimes even in winning one loses, and this "win" for Pharma appears tainted with the sense that Pharma is once again being treated "special." Even if this article is correct in the procedural aspect of factual deference, the facts appear so shaky that your average reader (and even your average reading attorney) may question the outcome.

Nice write-up Kevin, especially your comment that what you call "unicorns" [patent owner 103 IPR wins] could be more frequent with better affidavit evidence of insufficient POSITA motivation to combine the cited references. That SHOULD logically be easier to do in the "unpredictable arts," as here. In fact, IPR statistics already show a big difference in IPR claim survival rates between pharmaceutical or other chemical claims and the far more common IPRs on "do it on any computer" claims. The former are NOT "unicorns."

Well, remember the court provides only a synopsis and MM has made arguments Apotex made or should have made. Perhaps the Board and the court were swayed by this being "the drug of last resort," but regardless of whether the decision was correct the Federal Circuit's ability to address any mistake has been severely curtailed by Zurko.

Thanks for the comment.

Dr. Noonan,

I would not characterize the situation as "severely curtailed."

Sure, procedurally, there is a different standard between visiting law and the visiting the facts found below.

But contrast this case with yet another case expounded upon "at that other blog": Semcon Tech v. Micron (Fed. Cir. 2016).

In THAT case, the upper court DID reach back into the facts of the case and reverse an expert's UNREBUTTED testimony.

The point here (and the point of my first post) is that there appears to be some sort of "playing favorites" when it comes to a large scale (established) Pharma entity which is further pronounced given the unusually better discussion from MM.

This Pharma case - on its face - was more amenable to a revisiting of the factual predicates than was the case in which an expert was unrebutted, but that the reviewing court went over with a seemingly fine tooth comb in order to reverse.

Dear Skeptical:

You miss an important distinction: the Semcon case was a district court case, while this case is before the PTO. The Semcon case was decided on summary judgment, and in the District of Delaware the reviewing court takes the facts and renders its own judgment de novo. So I think it more likely that the Federal Circuit will reverse in that case than in the one at issue, if only because the Supreme Court interpreted the APA as requiring the Federal Circuit to give deference to the PTO's factual determinations (and the Federal Circuit implemented that instruction in In re Gartside).

Thanks for the comment. I would caution against imputing "favoritism" for any group of plaintiffs before the Federal Circuit; I don't think the members of the court think that way.

Thanks for the important clarification Dr. Noonan. I was not aware that the treatment of the district court's facts was a "de novo" review.

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