Incept LLC v. Palette Life Sciences, Inc. (USPTO as Intervenor)
Docket No. 2021-2063, -2065 (IPR2020-00002, -00004) (https://cafc.uscourts.gov/opinions-orders/21-2063.OPINION.8-16-2023_2174973.pdf)
NEWMAN, SCHALL, TARANTO
August 16, 2023
Brief Summary: Board IPR anticipation and obviousness decisions affirmed.
Summary: Incept appealed final written decisions (FWDs) holding the claims of US 8,257,723 and 7,744,913 relating to methods for using an injectable filler (a gel) and radiation to treat cancer (e.g., prostate cancer) invalid an anticipated or obvious in view of the prior art (US ‘245 patent to Wallace, ‘080 PCT application to Griffith-Cima, and US ‘314 patent to Ein-Gal). The opinion summarizes “the claims of both patents” as reciting “a filler that is (1) biocompatible, (2) injectable, (3) a gel in the patient, (4) biodegradable/removable by biodegradation, and (5) introduced between a radiation target and nearby tissue”. The FC panel explained that “a prior art reference will anticipate a patent claim if it discloses all of the limitations of the claim “arranged or combined in the same way as in the claim” (NetMoney, FC 2008). Incyte argued the Board erred as “it engaged in a ‘patchwork approach’ that involved ‘picking and choosing’ from Wallace”, relying on genus-species precedent such as Eli Lilly (FC 2006), Atofina (FC 2006), and Metabolite (FC 2004). The FC panel disagreed, however, and concluded the Board correctly “found that Wallace expressly describes compositions that have the claimed characteristics of, and are used for the same displacement purpose as, the compositions referred to in the ’723 patent claims” and is therefore anticipatory (Richardson, FC 2009; “Our role is not to reweigh evidence or make factual findings, but to review the Board’s findings for substantial evidence” citing Roku, FC 2023). Regarding the Board’s obviousness conclusions, Incept argued the Board “(1) merely reiterated its anticipation analysis; (2) disregarded statements in Wallace that teach away from the claimed biodegradable compositions; (3) did not separately analyze the obviousness of the dependent claims; and (4) improperly disregarded Incept’s evidence of commercial success.” The FC panel disagreed, explaining that it “fail[s] to see how the Board’s reliance upon that analysis was in error” “having found no error in the Board’s anticipation analysis” regarding the ‘723 claims. It also disagreed “that the Board’s obviousness analysis for the ’913 patent was based entirely on its anticipation analysis for the ’723 patent claims” as it determined obviousness based on a combination of Wallace and Ein-Gal. The FC panel also disagreed that Wallace teaches away, explaining that “a reference does not teach away if it ‘merely expresses a general preference for an alternative invention but does not criticize, discredit or otherwise discourage investigation into the invention claimed’” (UCB, FC 2023; DuPuy Spine, FC 2009). The FC panel rejected Incept’s arguments regarding certain dependent claims because it “did not separately argue their patentability before the Board” (Genentech, FC 2020). Incept also argued the Board incorrectly concluded its evidence of commercial success was insufficient (e.g., J.T. Eaton, FC 1997 (Commercial success is “usually shown by significant sales in a relevant market.”)), but the FC panel disagreed (e.g., “it did not argue before the Board in its Patent Owner Response or Sur-Reply that the data for these years demonstrated commercial success”; the Board did not require Incept to provide market share data (Chemours, FC 2021); Yorkey, FC 2010 (FC “defer[s] to the Board’s findings concerning the credibility of expert witnesses”). The Board decisions were therefore affirmed. Judge Newman dissented as to the dependent claims, arguing those were not considered in sufficient detail.