In re: John L. Couvaras, Appeal No. 2022-1489 (Fed. Cir. June 14, 2023)
In our Case of the Week, the Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeals Board decision that a patent application’s claims drawn to a hypertension treatment were obvious. The pending claims recited a method for increasing prostacyclin release in human blood cells with hypertension, by co-administering two well-known antihypertensive agents: a GABA-a agonist and an Angiotensin II Receptor Blocker (“ARB”). During prosecution, the applicant conceded that GABA-a agonists and ARBs “have been known as essential hypertension treatments for many, many decades.” The examiner also cited ten references establishing that GABA-a agonists and ARBs treat hypertension, and found that the claimed results of co-administering the two was unpatentable, because that claimed result—treating hypertension—naturally flowed from the claimed administration of the two antihypertensive agents. On appeal to the Board, the applicant argued that objective indicia of non-obviousness overcame any prima facie case of obviousness. The Board, however, agreed with the examiner that the claimed result was inherent in the co-administration of the two antihypertensive agents, and that there was no evidence to support a finding of any objective indicia.
The applicant raised three issues on appeal to the Federal Circuit. First, the applicant argued that the Board erred in finding that a skilled artisan would be motivated to combine the prior art asserted by the examiner. The Federal Circuit quickly agreed with the Board and examiner, however, in finding that “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.”
Second, the applicant argued, citing to Honeywell International Inc. v. Mexichem Amanco Holdings S.A., 865 F.3d 1348 (Fed. Cir. 2017), that because the result of the combination was unexpected, it could not be dismissed as unpatentable due to inherency. However, the Court noted that Honeywell only says that unexpected results may turn what appears to be an obvious composition into a non-obvious one, not that unexpected results must turn what appears to be an obvious composition into a non-obvious one. According to the Federal Circuit, “newly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.”
And third, the applicant argued that the Board erred in weighing the objective indicia of non-obviousness, by giving no weight to the “unexpected results” indicium. However, the Federal Circuit stated again that just because a combination achieves an unexpected result does not per se mean the combination is non-obvious, continuing to point out that for the combination to become non-obvious, the unexpected result must provide an unexpected benefit. Applicant had provided no evidence of unexpected benefits, and thus could not overcome the prima facie case for obviousness.
The opinion can be found here.
By Tyler Hall
ALSO THIS WEEK
Parus Holdings, Inc. v. Google LLC, Appeal Nos. 2022-1269, -1270 (Fed. Cir. June 12, 2023)
In an appeal from a Patent Trial and Appeal Board decision finding claims from two patents invalid as obvious, the Federal Circuit affirmed. At issue was primarily whether two publications constituted prior art under pre-AIA section 102. Parus argued that it could pre-date one of the prior art references by showing prior conception and reduction to practice of its claimed invention. However, to make its case, Parus relied on approximately 40 exhibits plus a number of claimed charts totaling more than 100 pages that it incorporated by reference into its briefs, but did not otherwise include or argue in its brief with “meaningful explanation.” The Board declined to consider those arguments, consistent with its regulations prohibiting parties from incorporating arguments into their briefs by reference. The Federal Circuit affirmed, finding no abuse of discretion and further finding that the Board’s decision did not violate the Administrative Procedures Act or the Patent Act. Parus argued that a second prior art reference was not prior art, but was rather an application to which the patent claimed priority. The Board found a lack of written description support for all of the challenged claims in that application, and therefore considered it prior art. The Federal Circuit agreed with the Board’s assessment. The Court also reaffirmed its prior holding that arguments made in a preliminary response but not included in the response itself are waived. With those two references treated as prior art, the Federal Circuit affirmed that the patent claims were invalid as obvious.
The opinion can be found here.
By Nika Aldrich
