Friday, July 13, 2018

CAFC affirms PTAB in Jazz Pharmaceuticals

The outcome:

Jazz Pharmaceuticals, Inc. (“Jazz”) appeals from six
inter partes review (“IPR”) decisions of the United States
Patent and Trademark Office Patent Trial and Appeal
Board (the “Board”).1 Collectively, the decisions held
certain claims of Jazz’s U.S. Patents 7,668,730 (“’730
patent”), 7,765,106, 7,765,107, 7,895,059, 8,589,182,
8,457,988 (“’988 patent”), and 8,731,963 (“’963 patent”)
(together, the “patents in suit”) invalid as obvious. Because
the Board did not err in its conclusions of obviousness,
we affirm.

TSM arises at the end of the opinion

We also agree with Amneal that Jazz misinterprets
both the Supreme Court’s decision in KSR and this court’s
obviousness precedent. KSR did not impose a rigid requirement
to identify both a problem to be solved in the
art and a finite universe of potential options. Rather, the
Supreme Court rejected the teaching, suggestion, or
motivation test, because the Court considered that the
test was a “[r]igid, preventative rule[] that den[ies] factfinders
recourse to common sense.” KSR, 550 U.S. at 421.

Furthermore, the Supreme Court also rejected the “assumption
that a person of ordinary skill attempting to
solve a problem will be led only to those elements of prior
art designed to solve the same problem.” Id. at 420. We
have similarly recognized that persons of ordinary skill
have diverse motivations, including “[t]he normal desire
. . . to improve upon what is already generally known.” In
re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017); see
also Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280,
1291 (Fed. Cir. 2012) (“New compounds may be created
from theoretical considerations rather than from attempts
to improve on prior art compounds.”).
KSR did state that “[w]hen there is a design need or
market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options
within his or her technical grasp.” KSR, 550 U.S. at
421. But it did not set forth such factors as part of a
mandatory formula. To treat them as such would be
inconsistent with KSR’s holding and our own case law.
Thus, the Board did not err in concluding that implementing
the ACA materials’ centralized database system on
multiple computers “would have been a predictable use of
a known distributed data system according to its established
function.” ’730/’988 Decision, 2016 WL 7985458, at
*25 (citing KSR, 550 U.S. at 417). As Jazz has presented
no other arguments challenging the Board’s finding of a
motivation to modify, we affirm its holdings with respect
to claims 2 and 10 of the ’988 patent and claims 24, 26,
and 27 of the ’963 patent


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