Free Samples and Fillers: No Teaching Away or Commercial Success

| Daniel P. Hughes


Before Newman, Schall, and Taranto.  Appeal from the Patent Trial and Appeal Board.

Summary: No teaching away when art does not disparage invention and free samples cannot count as commercial success.

Palette requested Inter Partes review of patents owned by Incept.  The patents at issue claimed introducing a biodegradable filler between a radiation target tissue and other tissue to decrease the amount of radiation received by the non-targeted tissue. Palette argued that some claims at issue were anticipated by the prior art reference Wallace and other claims were obvious in light of Wallace.  Incept argued that Wallace taught away from the claimed inventions because Wallace taught that its fillers were “essentially nondegradable” over at least several months.  Incept also argued that its commercial success in selling a covered product showed the claims were not obvious.  The PTAB found that Wallace anticipated the claimed invention and did not teach away because a teaching that a filler was nondegradable over several months implied that the filler was degradable after several months.  The PTAB also rejected Incept’s commercial success arguments because the sales data that Incept relied on included free samples. 

The Federal Circuit affirmed the Board’s decision. The Federal Circuit agreed that Wallace did not teach away because it did not disparage or discredit using biodegradable filters and instead implied that the fillers were biodegradable.  The Federal Circuit also affirmed the Board’s decision that Incept did not provide sufficient evidence of commercial success.

Judge Newman dissented in part, arguing that Wallace did not describe all limitations of the claims.  Newman further argued that the Board errored by disregarding Incept’s evidence of commercial success.

Editor: Paul Stewart