In Genzyme v. BioMarin, Federal Circuit permits "state of the art" analysis using non-instituted references

[...]the Board's recent decision on remand in Ariosa clarified that it will not "play archaeologist with the record," for example, by sifting through expert declarations or by inferring a motivation to combine references from a claim chart, to construct an argument not clearly designa...

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Bibliographic Details
Published inIntellectual property & technology law journal Vol. 28; no. 10; pp. 19 - 21
Main Authors McDonell, Leslie A, Jacobstein, Jeffrey M, Leiman, Sara A
Format Journal Article
LanguageEnglish
Published Clifton Aspen Publishers, Inc 01.10.2016
Subjects
Evidence
Federal court decisions
Laws, regulations and rules
Legal arguments
Legal citations
Notice (Law)
Patentability
Portfolio management
State court decisions
Trials
United States > US
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Summary:[...]the Board's recent decision on remand in Ariosa clarified that it will not "play archaeologist with the record," for example, by sifting through expert declarations or by inferring a motivation to combine references from a claim chart, to construct an argument not clearly designated in a petitioner's brief.8 While the Patent Owner Must Have Notice and an Opportunity to Respond to the References Used to Invalidate a Patent, That Notice Does Not Need to Come from the Board In the current case, the Federal Circuit held that Genzyme had notice of the in vivo studies and how the Board might use them because BioMarin relied on the studies in its Petitioner's Reply and the parties discussed them at oral arguments. [...]a second lesson to take from this case is that, when faced with new references presented after institution that potentially threaten a patent's validity, particularly where the references are characterized as informing "the state of the art," a patent owner may need to consider efforts to exclude those references from consideration by the Board.
ISSN:1534-3618