Life Sciences IPR Final Written Decision; Touches on Written Description, 102 and 103

Written by Gwilym Attwell.

Life Sciences IPR Final Written Decision; Touches on Written Description (in determining whether or not priority claim is valid), 102 and 103 (including a rejection of PO’s assertion of unexpected results).

In the FWD, the Board held that Petitioner had shown that certain claims [1-9 and 11-19] of USP 8,273,565 were unpatentable. (Claims 1-19 were originally challenged and IPR was instituted on claims 1-9 and 11-19).

The '565 Patent is "directed to recombinant yeast microorganisms with increased activity of dihydroxy acid dehydratase". In its decision, the Board held that based on the petitioner's claim construction, the provisional applications that were the bases for the priority claim of the patent at issue failed to provide written description support for the claims - and included a discussion of requirements necessary to support a genus claim. Based on the determination that the claims were not entitled to the priority claim, the Board found the claims unpatentable under 102. Certain claims were also found unpatentable under 103 - the Board was not convinced by arguments of unexpected results, finding that extent of increased activity was not surprising and that any increase in activity was not unexpected. Also, Board held that evidence of unexpected results was not commensurate in scope with the scope of the claims.

Read the full decision.