As the PTAB reminded the parties in this case: To the extent that it is a close call, it is noteworthy that the burden of persuasion is on the Petitioner. More Decisions On Motivation The Federal Circuit recently affirmed a similar PTAB decision in Apotex, Inc. v. Wyeth, LLC, 2015-1871 (Fed. Cir. August 16, 2016) (appeal of IPR2014-00115). The patent at issue in Apotex was directed to a formulation of tigecycline, a known tetracycline antibiotic, that prevents degradation of the drug.
The decision suggests that factual distinctions persuasive to the Board may be useful by patentees as kryptonite against invalidation in IPR proceedings, particularly due to the difficulty in persuading a not always patent supportive Federal Circuit to reverse the Board in view of the substantial evidence standard of review. While clearly not always available as a strategy, patentees in IPR would be remiss if they did not use expert testimony and other factual evidence to rebut prima facie obviousness assertions used as the basis for the Board's institution of an IPR against them.Apotex Inc. v. Wyeth LLC (Fed. Cir. 2016) Nonprecedential disposition Panel: Circuit Judges Lourie, Wallach, and Hughes Opinion by Circuit Judge Lourie