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Novartis AG v. Noven Pharmaceuticals, Inc.

On Similar Evidence and Argument, PTAB May Differ in Obviousness Determinations from District Court

Novartis AG v. Noven Pharmaceuticals, Inc., (Fed. Cir. Apr. 4, 2017) (Prost, WALLACH, Stoll) (PTAB) (3 of 5 stars)

Fed Cir affirms IPR determinations of non-patentability for obviousness. The existence of prior district court and Fed Cir authority finding Novartis’s claims nonobvious on a similar record (Novartis, 611 F. App’x 988 (Fed. Cir. 2015); Novartis, 125 F. Supp. 3d 474 (D. Del. 2015)) did not demonstrate factual or legal error in the Board’s decisions. As a factual matter, the record in the IPR included additional art and declarations not present in the judicial cases. As a legal matter, the different standard of proof in IPR (preponderant evidence) than in district court (clear and convincing evidence) means that the PTAB can properly reach a “different conclusion based on the same evidence.” Slip op. at 7–8. Baxter, 678 F.3d 1357 (Fed. Cir. 2012), is not contradictory. Baxter merely noted that the PTO should “ideally” reach, on the same evidence and argument, the same outcomes as a district court. But Baxter “used ‘ideally’ to connote aspiration,” and recognized that the PTO has its own standards to apply.

On the record, substantial evidence supported the PTAB’s obviousness determination.

KEYWORDS: INTER PARTES REVIEW; STANDARD OF REVIEW; OBVIOUSNESS (YES)