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Anacor Pharmaceuticals, Inc. v. Iancu

No Error in IPR Petitioner Timely Offering New Evidence Responding to Arguments in Patent Owner Response

Anacor Pharmaceuticals, Inc. v. Iancu, __ F.3d __, 2018 WL 2187768 (Fed. Cir. May 14, 2018) (Reyna, BRYSON, Stoll) (PTAB) (3 of 5 stars)

Fed Cir affirms IPR decision of unpatentability for obviousness. Anacor’s patent related to the use of tavaborole to treat fungal infections under fingernails and toenails. The Board’s proceedings violated neither the APA nor due process. The opinion rejects Anacor’s argument that the Board impermissibly adopted a new theory of obviousness not presented in the petition. “The Board’s final written decision was based on the same combination of references [as the petition], and it concluded that the weight of the evidence supported the inferences drawn by the petition.” Op. at 11. The Board’s citation of two references not cited in the petition (as evidence of the knowledge of a skilled artisan) was permissible, and there is no bar against the introduction of new evidence in the course of a trial so long as the opposing party “is given notice of the evidence and an opportunity to respond to it.” Id. at 12 (quoting Genzyme, 825 F.3d 1360 (Fed. Cir. 2016)). Intelligent Bio-Systems, 821 F.3d 1359 (Fed. Cir. 2016), is not contradictory because in this case, the petitioner’s reply was appropriately responding to argument made in the PO’s response and evidence elicited via expert deposition. The opinion also rejects Anacor’s argument that the Board impermissibly shifted the burden of proof to Ancor to prove nonobviousness, and concludes that the record contained substantial evidence to support the Board’s obviousness finding. Finally, the opinion rejects Anacor’s argument that the Board disregarded structural differences among the compounds at issue. The opinion discusses how structural similarity can be an important consideration in the obviousness inquiry, particularly in assessing the motivation to combine and reasonable expectation of success. However, similar structures do not always perform similar functions. The Board properly understood that the petition’s obviousness theory was not based on structural similarity alone, but on “the combination of structural similarity and functional similarity.” Op. at 21.

KEYWORDS: INTER PARTES REVIEW; OBVIOUSNESS (YES); ADMINISTRATIVE PROCEDURE ACT; DUE PROCESS; OBVIOUSNESS (YES)