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Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/21-2063.OPINION.8-16-2023_2174973.pdf">Incept LLC v. Palette Life Sciences, Inc., Nos. 2021-2063, -2065 (Aug. 16, 2023)</a>, affirming the Patent Trial and Appeal Board’s determination that two Incept patents were unpatentable over the prior art.

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Incept’s patents, U.S. Patent Nos. 8,257,723 and 7,744,913, relate to methods for treating cancer using a filler between a radiation target tissue and non-target tissue. The claims recite a filler that is (1) biocompatible, (2) injectable, (3) a gel in a patient, (4) removable by biodegradation, (5) and introduced between a radiation target and nearby tissue. Palette petitioned for Inter Partes Review, contending the claims were anticipated by and/or obvious in view of the prior art, including U.S. Patent No. 6,624,245 (“Wallace”). The Board instituted IPR and issued decisions holding the challenged claims to be unpatentable.

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Incept appealed. It contended the Board’s anticipation analysis was an improper “patchwork approach” used to fit together different pieces from the prior art’s teachings. Incept also argued the Board failed to identify teachings in Wallace that any of its compositions are “entirely removable by biodegradation” and that any of its compositions are placed “between an organ and a nearby tissue.” Regarding obviousness, Incept argued the Board erred by (1) merely reiterating its anticipation analysis; (2) disregarding statements in Wallace that teach away from the claimed biodegradable compositions; (3) failing to separately analyze obviousness of the dependent claims; and (4) disregarding Incept’s commercial success evidence.

The Federal Circuit affirmed. It found no error in the Board’s anticipation analysis because Wallace describes compositions that have the claimed characteristics and discloses the compositions referenced in the challenged patent claims. It also held that the Board’s anticipation findings were supported by substantial evidence. The Court likewise rejected each of Incept’s obviousness challenges. First, because it had affirmed the anticipation analysis, the Court held that the Board’s reliance on that analysis for obviousness was not erroneous. Second, the Court determined that Wallace did not teach away because it did not discourage investigation into the claimed invention. Third, the Court found that the prior art taught each element of the dependent claims, and that Incept did not separately argue the patentability of the dependent claims before the Board. Finally, the Court found no error in the Board’s determination that Incept’s commercial success evidence was insufficient.

CAFC Affirms PTAB Decision of Unpatentability

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