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« PTAB Life Sciences Report -- Part II | Main | PTAB Life Sciences Report -- Part III »

April 04, 2017


The outcome here may be legally correct, but that doesn't make it any less ridiculous. Talk about forum shopping...

Thanks, Congress.

Hey Andrew,

As painfully clear from this case, it is differing legal standards between IPRs and court adjudication in determining the validity of patent rights (which are personal property) that cry out why IPRs violate "due process" under the 5th Amendment. That SCOTUS or the Federal Circuit won't acknowledge that fact is dreadful.

The strange part about this case, to my mind, is that even if there is a different *legal* burden of proof between the two proceedings, surely the PTAB is bound to accept the district court's fact-findings under the doctrine of collateral estoppel (issue preclusion). That is to say, (1) the same two parties (2) actually litigated (3) factual matters that were critical to the outcome of (4) a case that was actually decided by (5) a tribunal of competent jurisdiction. You can check all the boxes for why collateral estoppel attaches here, so presumably the PTAB was not free to find facts contrary to those found by the district court, even if the PTAB applies a different legal standard to the evaluation of those facts.

Motivation to combine is "pure question of fact," not law. Par Pharma. v. TWi Pharma., 773 F.3d 1186, 1196 (Fed. Cir. 2014). The district court found—as a fact—that there was no motivation to combine Enz and Sasaki at the time of invention. If there was no motivation to combine, then even under a lower evidentiary threshold ("preponderance of the evidence" rather than "clear & convincing"), *how* can one sustain a legal conclusion of obviousness? As a matter of law, obviousness *requires* a motivation to combine. Bristol-Myers Squibb v. Teva Pharma., 752 F.3d 967, 973 (Fed. Cir. 2014) ("A party seeking to invalidate a patent as obvious must demonstrate... that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention," internal quotations omitted).

I realize that Noven presented different evidence in front of the PTAB, but that is the point of collateral estoppel—your new evidence does not matter. You had your chance to present that evidence in the first trial, and if you failed to do so then you must live with the consequences now. How, then, is this new evidence of any legal consequence?

In other words, it seems to me that there is more going on here than just "the d. ct. and the PTAB have different legal standards." Even under the different legal standards, it ought not to have been legally possible for the PTAB to hold for obviousness if the doctrine of collateral estoppel were applied—as it should be—to the fact-finding.

Strangely, the CAFC opinion never even mentions collateral estoppel (or its modern name, issue preclusion). It is as if the question of collateral estoppel were never raised. How is that possible?

Why was there here a full expensive D.C. trial on this patent before the IPR decision? The whole point of the short IPR time deadline is to preclude that, and it almost always does.

"[i]t is unsurprising that different records may lead to different findings and conclusions."
Oh come on, really? It's not so difficult to make the IPR record just a little different. Substitute a reference for a cumulative one, move a few sentences around in your expert's report, and you're good. Judge Wallach knows better.

"And let's hope it does not snow tonight."


CAFC's intellectual dishonesty, lack of rigor, and willing disregard of long-established legal precedent (and the reasons for same), are disheartening. CAFC is an outcome determinative body committed to an ideologically driven, patent-killing agenda, not a deliberative court committed to the rule of law. Sad.

The country deserves better.

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