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General Hospital Corp. v. Sienna Biopharmaceuticals, Inc.

Failure to Weigh Interference Claimant’s Certification of Patentability for New Claim Was Arbitrary/Capricious

General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., __ F.3d __, 2018 WL 2072125 (Fed. Cir. May 4, 2018) (MOORE, Reyna, Taranto) (PTAB) (3 of 5 stars)

Fed Cir vacates dismissal of interference. The Board committed no error in determining that a claim reciting a concentration of “about” a certain concentration would encompass a range of 10% on either side. And substantial evidence supported the Board’s determination that GHC’s application failed to disclose values within that range. Per Purdue Pharma, 230 F.3d 1320 (Fed. Cir. 2000), disclosure of a broad range did not provide written description for the specific claimed values. The opinion rejects GHC’s argument that disclosure of specific concentrations that were within 10% of the claimed range (which itself extended 10% on either side of recited value). “A disclosed range that minimally overlaps with the claimed range does not provide written description support for the claimed range,” per Eiselstein, 52 F.3d 1035 (Fed. Cir. 1995). Op. at 7.

The Board erred, however, in denying GHC’s contingent motion to amend to add a new claim. The Board acted arbitrarily and capriciously in failing to give weight to GHC’s certification (per the Board’s Standing Order) that GHC was unaware of any reason why the new claim was not patentable. The opinion notes that there was no inconsistency in the prosecution history with such a certification (which would have been grounds to give the certification no weight). The Board also erred in finding that GHC had not shown that its proposed new claim interferes with any of Sienna’s claims. Per Galderma Laboratories, 737 F.3d 731 (Fed. Cir. 2013), amidst others, showing that a claimed value falls within a range disclosed in the prior art is generally enough to establish obviousness (absent evidence of unpredictability). “It is not disputed that the values in the proposed claim fall within the ranges in claim 1 of [Sienna’s] patent. Under the circumstances of this case, GHC has put forth sufficient evidence to establish proposed claim 74 would have been rendered obvious by claim 1 of [Sienna’s] patent.” Op. at 9.

KEYWORDS: INTERFERENCE; WRITTEN DESCRIPTION; CONTINGENT MOTION TO AMEND