Vidal overturns PTAB decision on pig vaccine patent
Boehringer Ingelheim challenged university patent | Board must provide more details on ruling.
The US Patent Trial and Appeal Board (PTAB) has been ordered to provide further details on why it denied post-grant review of a patent relating to a pig vaccine in a director review by US Patent and Trademark Office (USPTO) head Kathi Vidal.
Vidal’s decision, issued on February 24, voids the PTAB’s decision denying post-grant review, and requires the board to “set forth its rationale in sufficient detail” and allow for review.
Challenge to claims rejected
In December 2021, Boehringer Ingelheim Animal Health US challenged certain claims in US patent number 10,954,274 B2, which belonged to Kansas State University Research Foundation. The patent covers a vaccine against a virus that affects pigs, known as porcine circovirus type 3 (PCV3).
Boehringer Ingelheim argued that certain claims in the patent lacked written description and enablement, and were obvious in view of prior art, rendering it unpatentable. The firm contested that the specification did not provide written description support for the full scope of the claimed genus, and separately, did not enable the full scope of the claims to be practised without undue experimentation.
In July the following year, the PTAB denied the institution of a post-grant review. Applying the framework as set out in Advanced Bionics v Med-El Elektromedizinische Geräte, the board found that the USPTO had already considered Boehringer Ingelheim’s argument that the claims lack written description support during examination. Further, the judges said that Boehringer Ingelheim had not demonstrated that the USPTO had “materially erred” in its previous written description analysis.
Regarding the obviousness challenges, the board found that Boehringer Ingelheim failed to demonstrate that the claims were likely to be unpatentable.
Director review differs
Following her review, Vidal argued that the board “did not explain the basis for its finding that the petitioner’s enablement challenge constituted, under Advanced Bionics, the same or substantially the same arguments previously presented to the Office on written description”.
She contested that the written description and enablement requirements involve different considerations and an argument made regarding one requirement does not necessarily equate to an argument made regarding the other.
Vidal has ordered that the decision denying the institution is vacated, and that the case is remanded to the board so it can issue, within a month, a decision on the institution.
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