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1 March 2017Americas

Federal Circuit remands PTAB decision over LA Biomedical patent

The US Court of Appeals for the Federal Circuit has remanded a decision to the Patent Trial and Appeal Board (PTAB) concerning a dispute between LA Biomedical Research Institute and Eli Lilly.

Handed down yesterday, February 28, the ruling also vacated the decision of the PTAB, which had held that all claims of US patent number 8,133,903, owned by LA Biomedical, are unpatentable as obvious.

LA Biomedical appealed against the PTAB’s inter partes review (IPR) of its patent, which covers a method of “arresting or regressing” a condition known as penile fibrosis.

In 2013, LA Biomedical filed a lawsuit at the US District Court for the Central District of California, alleging that Eli Lilly’s marketing of the drug Cialis (tadalafil) infringed its patent.

Eli Lilly then filed multiple petitions requesting that the PTAB conduct an IPR of the ‘903 patent.

The PTAB instituted an IPR in which Eli Lilly contended that all claims of the patent were obvious.

According to the Federal Circuit, “the board’s obviousness determination was predicated on an erroneous claim construction of two of the limitations of claim 1”.

It added that the PTAB didn’t make factual findings on whether there was a reason to combine the prior art references and whether a skilled person would have had a reasonable expectation of success from such a combination.

The Federal Circuit also asked the board to make findings on the obviousness of the “arresting or regressing” limitation.

In a 2-1 decision from the Federal Circuit, Judge Newman disagreed with the ruling and said: “I don’t say that remands are never appropriate, but remands should be rare.”

Newman added: “Here the issues were fully developed, with eloquent argument all around, and an extensive board opinion in which my colleagues find only slight gaps. Finality is available; it is our obligation to decide the merits.”

The Federal Circuit also ruled on an appeal on a different IPR which was brought by Eli Lilly concerning the same patent. The PTAB found the patent to be anticipated and the Federal Circuit affirmed the ruling.

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