December 18, 2015

“Merck Ruling A Wake-Up Call For Patent Owners Facing PTAB,”Law360, December 18, 2015

Law360, New York (December 18, 2015, 9:44 PM ET) — The Federal Circuit’s decision Thursday upholding a Patent Trial and Appeal Board ruling that dietary supplement patents licensed by Merck KGaA are invalid as obvious provides a clear illustration of the risks for patents in inter partes reviews and how tough it is to get PTAB decisions overturned on appeal, attorneys say.

The initial PTAB decision in 2014 that Merck’s arguments for why the patents were not obvious could not overcome challenger Gnosis SpA’s evidence of obviousness is an indication that the board will be very closely scrutinizing the defenses used by patent owners in inter partes review, according to attorneys following the case.

The high number of decisions in which the PTAB has invalidated patents, often on the grounds of obviousness, is no secret in the patent world. However, the Merck case provides a particularly stark view of how patents are more likely to be found invalid at the board than in district court, said Gregory DeLassus of Harness Dickey & Pierce PLC.

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