Federal Circuit Vacates PTAB Claim Construction and Obviousness Conclusion in Eli Lilly’s IPR against LA BioMed
The Federal Circuit held that a rat study in a provisional application and a conversion method in an uncited reference did not support the claimed human dosage form in Los Angeles Biomed. Research Inst. v. Eli Lilly & Co., No. 16-1518 (Fed. Cir. Feb. 28, 2017). The Federal Circuit further held that claims directed to an underlying condition should not be construed broadly to treat symptoms of that condition.
Eli Lilly requested inter partes review of a patent owned by Los Angeles Biomedical (“LA BioMed”). LA BioMed argued that the references at issue were not prior art under the statute (35 U.S.C. § 102(b)) alleged by Eli Lilly because they published shortly before a provisional application to which the patent claimed priority. LA BioMed argued that the patent’s dosage limitation “up to 1.5 mg/kg/day” was supported by a rat study in its provisional application because one skilled in the art would have been able to calculate the corresponding human dosage using a conversion method described in a journal article.
The PTAB rejected LA BioMed’s priority claim because one skilled in the art would have had to investigate the prior art and make various assumptions. The PTAB also construed the claims broadly to apply to treatment of a symptom that often, but not always, accompanies the claimed condition. Based on the broad claim construction, the PTAB held that the claims were obvious over the cited references.
The Federal Circuit affirmed the PTAB’s decision on priority because “proof of priority requires written description disclosure in the parent application, not simply information and inferences drawn from uncited references.” However, the Federal Circuit held that the claims were directed toward a specific condition, not a symptom of the condition. The Federal Circuit reasoned that the PTAB’s claim construction would make the claims apply to the treatment of the symptom, even if it was caused by an entirely different condition. Based on the correct claim construction, the Federal Circuit reversed the PTAB’s findings of obviousness and remanded for additional factual findings.