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Fresh From the Bench: Recent Patent Cases From the Federal Circuit

May 28, 2014

Overview

Tobinick – The Circuit reverses an interference determination that there was inadequate disclosure in the specification to support copied claims directed to the treatment of herniated discs.

Tobinick v. Olmarker and Rydevik, Fed. Cir. Case 2013-1499 (May 19, 2014)

Tobinick requested an interference by copying claims from two of Olmarker's and Rydevik's patents covering methods of treating spinal nerve injuries by locally or epidurally administering an inhibitor. While the AIA eliminated interferences for ‎patent applications filed after March 16, 2013, it is still possible to have interferences declared as to applications ‎and patents filed prior to that date. ‎The Patent Trial and Appeal ‎ Board narrowly construed the term "administered locally" as administered "directly to the site where it is intended to act" and where the herniation "is causing the symptoms of the nerve disorder." Based on this construction, the Board determined that Tobinick's patent application did not contain adequate written description to support these counts.

The Circuit panel agreed with the Board's claim construction but then turned to the issue of whether Tobinick's disclosure reasonably conveys to those skilled in the art that he had possession of the claimed local administration. Because written description is a question of fact, the panel stated that it would review the Board's written description finding for "substantial evidence and set aside actions that are arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law."

Olmarker and Rydevik argued that because the specification includes non-local forms of administration, it lacks support for claims limited to an injection directly to the site where it is intended to act, an argument that was successful before the PTO Board. The panel disagreed, finding that the specification, "plainly describes localized epidural injection." The panel concluded that the Board's finding of lack of adequate written description is not supported by substantial evidence and thus reversed the Board's decision to dismiss the interference.

As noted in the opinion, while the AIA eliminated interferences for ‎patent applications filed after March 16, 2013, it is still possible to have ‎interferences declared as to applications ‎and patents filed prior to that date, as long as the interference claim is ‎submitted within one year of issuance of ‎a patent or within one year of the publication of an application. ‎Interferences in which priority of invention is determined will therefore be with us for at ‎least the next several years, so the Tobinick decision remains pertinent.‎ Moreover, the opinion is applicable to many of the other decisions by the PTO Board that the Circuit reviews, and shows that the Circuit is not reluctant to reverse such decisions even in the face of a high "substantial evidence" or "arbitrary, capricious and abuse of discretion" standard of review.

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