Federal Circuit clarifies claim scope, obviousness, and objective indicia inquiries on reexam

The Fed. Cir. dismisses Pasteur's appeal from inter partes reexamination rejections as to one patent, reverses the Board's obviousness rejection for a second patent, and vacates and remands the Board's obviousness rejection for a third patent. The patents relate to site-directed insertion of genes into eukaryotic chromosomes. Precision Biosciences was the petitioner.

Institut Pasteur & Universite Pierre et Marie Curie v. Focarino, __ F.3d __ (Fed. Cir. Dec. 30, 2013) (Newman, Clevenger, TARANTO) (BPAI) (3 of 5 stars)

CHANGING CLAIM SCOPE ON REEXAM: Because the first patent expired on appeal and the claims had been substantively amended, the claims could not issue under PTO regulations (even if the Board had erred), so the Fed. Cir. dismissed the appeal on that patent as moot.

OBVIOUSNESS: The Board committed prejudicial errors in finding obviousness for the second patent: (a) it misread two prior art references by characterizing both as disclosing cleavage of chromosomal DNA in yeast cells, when neither did, so its fact findings were not supported by substantial evidence; (b) it ignored teachings that the claimed method would have been highly toxic to the cells; "[s]uch teaching counts significantly against finding a motivation to take the claimed steps with a reasonable expectation of success," slip op. at 17; and (c) it did not give proper consideration to objective indicia (i.e., industry praise and licensing), because the "strong probative value" of the licensing was not trumped by the "theoretical possibility" that the licensing concerned other technology described in the patent. Id. at 20.

The third patent was closely related to the second, so the Fed. Cir. vacated rejections for that patent too. It also told the Board to consider whether a skilled artisan would have been motivated to pursue the claimed invention, which the Board had missed.