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4 January 2017Americas

Federal Circuit backs PTAB in Johnson & Johnson patent appeal

The US Court of Appeals for the Federal Circuit has affirmed a Patent Trial and Appeal Board (PTAB) decision that said patent claims owned by Ethicon, a subsidiary of Johnson & Johnson (J&J), are invalid.

In a 2-1 decision handed down yesterday, January 3, the court affirmed the PTAB’s inter partes re-examination decision which held that a number of claims were obvious.

Ethicon owns US patent number 7,591,844, which relates to intraluminal medical devices for the local delivery of drugs, eg, drug-eluting stents, and methods for maintaining drugs on those devices.

The J&J subsidiary had previously sued Boston Scientific and Abbott Laboratories in the US District Court for the District of New Jersey, accusing the companies of patent infringement.

In 2010, Boston and Abbott each filed separate requests for inter partes re-examination of the ‘844 patent. The US Patent and Trademark Office (USPTO) merged and granted the requests.

During the re-examination, the examiner rejected claims 1–17 and 19–23 as obvious over US patent numbers 5,824,048 (Tuch); 4,816,339 (Tu); and 3,178,399 (Lo). The examiner relied on a translation of French patent 2,785,812 (Le Morel) to reject certain dependent claims.

“The examiner found that the evidence submitted by Ethicon regarding objective indicia of non-obviousness was insufficient to outweigh the conclusion of obviousness,” said Circuit Judge Alan Lourie in his opinion for the court.

The PTAB also considered Ethicon’s evidence regarding objective indicia of non-obviousness, but “found that none of it was entitled to substantial weight”.

Ethicon appealed and the director of the USPTO intervened, filing a brief and participating in oral arguments.

Lourie said: “Here, the board made sufficient factual findings under the circumstances to support its obviousness conclusion and those findings are supported by substantial evidence.”

Ethicon argued that the PTAB erred in discounting its proffered objective indicia of non-obviousness: copying, commercial success, industry praise, and unexpected results.

The USPTO director claimed that this evidence was insufficient to overcome the prima facie case of obviousness, contending that the arguments had “scant support in the record” and that the PTAB’s factual findings are supported by substantial evidence.

The court agreed that the board had “properly weighed” Ethicon’s evidence of objective indicia.


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28 January 2021   In a win for Johnson & Johnson, its Actelion unit has settled an infringement lawsuit after generic drug maker Laurus conceded that a patent for a pulmonary hypertension drug was valid.
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More on this story

Americas
28 January 2021   In a win for Johnson & Johnson, its Actelion unit has settled an infringement lawsuit after generic drug maker Laurus conceded that a patent for a pulmonary hypertension drug was valid.
Americas
9 February 2021   Johnson & Johnson has settled its case against Advanced Inventory Management, trading as eSutures, which it accused of distributing counterfeit and contaminated surgical tools.