Dissent at the PTAB Leads to … Unpatentability


Smith & Nephew, Inc. v. ConvaTec Technologies, Inc.

In its final written decision, the Patent Trial and Appeal Board (PTAB) found that 13 claims of the patent-at-issue were anticipated or obvious and rejected the patent owner’s contention of commercial success.  Smith & Nephew, Inc. v. ConvaTec Technologies, Inc., Case IPR2013-00102 (PTAB, May 29, 2014) (Guest, APJ) (Snedden, APJ, concurring-in-part).

Smith & Nephew petitioned the PTAB for review of a patent directed to methods for enhancing the photostability of silver in antimicrobial materials for use in wound dressing and medical devices. Materials that contain silver are, in general, light-sensitive and can become discolored upon exposure.  The patent-at-issue purported to address this issue.

In a first at the PTAB, an administrative law judge, while concurring in the final judgment, dissented from the majority’s construction of a vital patent term. In construing the term “substantially photostable,” the majority rejected the argument made by the patent owner and found no “reason to conclude that one of ordinary skill in the art would not consider purple as a desired color.”  In forming its construction, the Board discounted testimony of the patent owner’s expert, noting that the expert had limited her construction to the “desired color” of a particular product with which she was familiar and not to wound dressings and medical devices in general.

APJ Snedden, dissented, explaining that the majority’s construction of “desired color” was insufficiently technical and would include purely “aesthetic purposes.”  Judge Snedden instead argued that “desired color” should be interpreted as a measure of photostability.  Nevertheless, Judge Snedden found the patents-at-issue to be unpatentable.

In terms of the patent owners arguments regarding secondary considerations—commercial success in particular the patent owner argued that its products had been commercially successful, and claimed that a nexus existed between the claimed features of the patent and its commercial success.  The Board disagreed that a nexus existed, noting that the patent owner had “provided no supporting evidence that the features recited in the claims . . . are responsible for the success.”  Most notably, despite claiming that the features of the claims were responsible for the success of their products, the patent owner failed to provide details of the manufacturing process, and their secondary considerations witness testified that they had no technical knowledge of the patent, and so “could not confirm whether specific products” in the line were even covered by the patent’s claims!

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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