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The court affirmed the PTAB’s finding that Merck’s claims were obvious over the prior art.  The court, applying the substantial evidence standard of review to the PTAB’s decision, held that the “because of the close similarity of purpose and disclosure between two references, a person of ordinary skill in the art would have been motivated to combine those references to arrive at the claimed invention.  The court rejected Merck’s argument that the PTAB had not made an explicit statement of the reasonable expectation of success because its findings meant that the reasonable expectation of success was impliedly found.  The court further affirmed the PTAB’s conclusion that there was an inadequate nexus to find that the objective indicia demonstrated non-obviousness. 

In her dissent, Judge Newman argued that the majority erred by using the highly deferential substantial evidence standard of review.  One purpose of the AIA was to ensure that the PTO provides optimum determination of patent validity, but this purpose will not be fulfilled if the petitioner need only prove invalidity by the preponderance of the evidence and the decision can only be appealed to the Federal Circuit which will review under the substantial evidence standard of review.  Judge Newman further argued that the finding of obviousness was not supported by substantial evidence.

Merck & Cie. v. Gnosis S.P.A., Case No. 2014-1779 (December 17, 2015); Opinion by: Hughes, joined by Plager; Dissenting opinion by Newman; Appealed From: Patent Trial and Appeal Board.  Read the full opinion here

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