A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

Regents of the University of Minnesota v. Gilead Sciences, Inc., No. 2021-2168 (Fed. Cir. (PTAB) Mar. 6, 2023). Opinion by Lourie, joined by Dyk and Stoll.

Gilead filed an IPR petition challenging claims of a patent owned by the Regents of the University of Minnesota directed to “phosphoramidate prodrugs of nucleoside derivatives that prevent viruses from reproducing or cancerous tumors from growing.” In a final written decision, the Patent Trial and Appeal Board found all of the challenged claims unpatentable as anticipated by a prior art reference called “Sofia.”

During the IPR, the parties agreed that Sofia discloses every limitation of each challenged claim. The result of the IPR thus hinged on whether Sofia qualified as prior art and the appropriate critical date for Minnesota’s patent. The Board held that the patent’s priority applications did not provide a written description sufficient to support the priority claim. The applications “contained neither ipsis verbis support nor sufficient blaze marks to guide the skilled artisan to the claims.” Thus, Sofia qualified as prior art and anticipated the claims. Minnesota appealed.

The Federal Circuit affirmed the Board’s decision. The court rejected each of Minnesota’s three arguments on appeal.

First, the Federal Circuit agreed with the Board that Minnesota’s priority applications do not show a written description of what the patent claims. The priority applications neither literally described, nor provided “sufficient blaze marks” to, the subgenus of the claims. Addressing the question of literal description, the Federal Circuit stated that the “maze-like path” asserted by Minnesota, with “each step providing multiple alternative paths,” is “not a written description of what might have been described if each of the optional steps had been set forth as the only option.” Thus, because the priority applications possessed neither ipsis verbis disclosure nor sufficient blaze marks, the Federal Circuit affirmed the Board’s decision that Sofia anticipated the challenged claims.

Second, the Federal Circuit disagreed with Minnesota’s arguments that the Board violated the Administrative Procedure Act. The Federal Circuit found no abuse of discretion in the Board’s handling of Minnesota’s expert testimony, refusal to reconcile its ruling with a prior decision involving “a different patent and a different record,” and alleged inconsistent application of the Board’s own procedural requirements.

Lastly, the Federal Circuit addressed Minnesota’s assertion that it is a sovereign state entity immune from IPR. The court addressed a previous decision involving Minnesota and ruled that this issue had been “litigated to finality and determined on the merits,” and so Minnesota is “collaterally estopped from making an immunity argument here.”

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