from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in Nos. IPR2014-00549, IPR2014-00550,
Charlotte Jacobsen, Fitzpatrick, Cella, Harper & Scinto,
New York, NY, argued for appellants. Also represented by
Nicholas N. Kallas, Christopher Earl Loh, Jared Levi
J. Lee, Andrews Kurth Kenyon LLP, New York, NY, for appellee.
Also represented by Christopher Justin Coulson, Kulsoom Zehra
Hasan, Michael K. Levy.
Frances Lynch, Office of the Solicitor, United States Patent
and Trademark Office, Alexandria, VA, argued for intervenor
Michelle K. Lee. Also represented by Nathan K. Kelley, Kakoli
Caprihan, Scott Weidenfeller.
Prost, Chief Judge, Wallach and Stoll, Circuit Judges.
Wallach, Circuit Judge.
instant appeals concern inter partes reviews of U.S. Patent
Nos. 6, 316, 023 ("the '023 patent") and 6,
335, 031 ("the '031 patent") (together,
"the Patents-in-Suit"). In two separate final
written decisions, the U.S. Patent and Trademark Office's
("USPTO") Patent Trial and Appeal Board
("PTAB") found that various claims of the
Patents-in-Suit ("the Asserted
Claims") would have been obvious over the prior
art. See Noven Pharm., Inc. v. Novartis AG
(Noven I), No. IPR2014-00549, 2015 WL 5782080, at
*23 (P.T.A.B. Sept. 28, 2015) (finding the disputed claims of
the '023 patent unpatentable as obvious); Noven
Pharm., Inc. v. Novartis AG (Noven II), No.
IPR2014-00550, 2015 WL 5782081, at *23 (P.T.A.B. Sept. 28,
2015) (finding the disputed claims of the '031 patent
unpatentable as obvious). The PTAB maintained its findings
when asked to reconsider them. See Noven Pharm., Inc. v.
Novartis AG (Noven III), No. IPR2014-00549,
2015 WL 9599194, at *8 (P.T.A.B. Nov. 30, 2015) (denying
request to reconsider Noven I); Noven Pharm.,
Inc. v. Novartis AG (Noven IV), No.
IPR2014-00550, 2015 WL 9599195, at *8 (P.T.A.B. Nov. 30,
2015) (denying request to reconsider Noven II).
Appellants Novartis AG and LTS Lohmann Therapie-Systeme AG
(together, "Novartis") contest numerous aspects of
the Final Written Decisions, including the PTAB's
conclusion that prior judicial opinions did not control its
inquiry and the PTAB's factual findings in support of its
obviousness conclusion. We affirm.
Matter Jurisdiction and Standard of Review
possess subject matter jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A) (2012). "We review the PTAB's
factual findings for substantial evidence and its legal
conclusions de novo." Redline Detection, LLC v. Star
Envirotech, Inc., 811 F.3d 435, 449 (Fed. Cir. 2015)
(citation omitted). "Substantial evidence is something
less than the weight of the evidence but more than a mere
scintilla of evidence, " meaning that "[i]t is such
relevant evidence as a reasonable mind might accept as
adequate to support a conclusion." In re NuVasive,
Inc., 842 F.3d 1376, 1379-80 (Fed. Cir. 2016) (internal
quotation marks and citations omitted).
PTAB Properly Concluded that the Asserted Claims of the
Patents-in-Suit Would Have Been Obvious
patent claim is unpatentable when "the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a
person having ordinary skill in the art [('PHOSITA')]
to which said subject matter pertains." 35 U.S.C. §
103(a) (2006). Obviousness "is a question of law
based on underlying findings of fact." In re
Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000) (citation
omitted). The underlying factual findings include (1)
"the scope and content of the prior art, " (2)
"differences between the prior art and the claims at
issue, " (3) "the level of ordinary skill in the
pertinent art, " and (4) the presence of secondary
considerations of nonobviousness such "as commercial
success, long felt but unsolved needs, failure of others,
" and unexpected results. Graham v. John Deere Co.
of Kan. City, 383 U.S. 1, 17 (1966); see United
States v. Adams, 383 U.S. 39, 50-52 (1966).
PTAB found that the Asserted Claims of the Pa-tents-in-Suit
would have been obvious over several different combinations
of prior art references. See Noven I, 2015 WL
5782080, at *23; Noven II, 2015 WL 5782081, at *23.
The PTAB found that claims 1-2, 4-5, and 7 of the '023
patent would have been obvious over a combination of two
prior art references-United Kingdom Patent Application GB 2,
203, 040 ("Enz") (J.A. 588-610) and Japanese Patent
Application 59-184121 ("Sasaki") (J.A. 634-37)-and
that claim 8 would have been obvious over a combination of
Enz, Sasaki, and two other references.See Noven
I, 2015 WL 5782080, at *23. The PTAB also found that
claims 1-3, 7, 15-16, and 18 of the '031 patent would
have been obvious over Enz and Sasaki. See Noven II,
2015 WL 5782081, at *23.
of raising arguments on the basis of a specific claim,
patent, or Final Written Decision, Novartis raises broad
legal and factual arguments with application to both of the
Final Written Decisions. See Appellants' Br. 6
n.1 (stating that the appealed decisions "are
substantively nearly the same" and that it will refer
only to Noven II throughout its brief), 35-65
(presenting arguments); see also Appellee's Br.
1 n.1 (agreeing to follow Novartis's convention and cite