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In a companion case to Merck v. Gnosis, decided on the same day, South Alabama makes essentially the same arguments why the PTAB erred by finding that the claims at issue would have been obvious.  The court did find error in the PTAB’s assessment of licensing evidence as lacking a nexus for the purposes of showing objective indicia of non-obviousness, because the nexus should have been between the patent and the licensing activity itself.  Thus, the nexus need not be between the products made as a result of the license and the patent for the licensing activity to be relevant.  Here, the PTAB’s failure to consider the evidence of licensing was harmless given the evidence of obviousness. 

In her dissent, Judge Newman again argued that obviousness had not been proven by a preponderance of the evidence.  

South Alabama Medical Science Foundation  v. Gnosis S.P.A., Case Nos. 2014-1778, -1780, -1781 (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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