This morning the Federal Circuit issued one precedential opinion in a patent case and one nonprecedential opinion in a patent case. Here are the introductions to the opinions.

Game and Technology Co.  v. Wargaming Group Ltd. (Precedential)

Game and Technology Co. (GAT) appeals the final written decision of the Patent Trial and Appeal Board, ruling that institution of inter partes review was not barred under 35 U.S.C. § 315(b) and that claims 1–7 of U.S. Patent No. 7,682,243 would have been obvious over the asserted prior art. Under the facts of this case, and as argued by the parties, the Board did not err in holding that petitioner Wargaming Group Ltd. was not properly “served with a complaint alleging infringement of the [’243] patent” more than one year before it filed its IPR petition. Accordingly, the IPR was not barred under § 315(b). Because substantial evidence supports the Board’s determination that claims 1–7 of the ’243 patent would have been obvious over the asserted prior art, we affirm.

Sanofi-Aventis Deutschland GmBH v. Mylan Pharms. Inc. (Nonprecedential)

Sanofi-Aventis Deutschland GMBH’s owns U.S. Patent Nos. 7,476,652 and 7,713,930, which describe and claim certain formulations of a particular kind of insulin. Mylan Pharmaceuticals Inc. sought and obtained from the Patent and Trademark Office (PTO) inter partes reviews of all claims of those patents under 35 U.S.C. §§ 311–319. In those reviews, the PTO’s Patent Trial and Appeal Board agreed with Mylan that the subject matter of the claims is unpatentable for obviousness. Sanofi appeals, challenging the Board’s findings that a relevant artisan would have had a motivation to combine prior-art references to arrive at the claimed inventions with a reasonable expectation of success, and also challenging the Board’s evaluation of Sanofi’s evidence of commercial success. We reject Sanofi’s challenges and affirm the Board’s decisions.

Dissenting opinion filed by Circuit Judge NEWMAN.

The court today rules that it was obvious to create this new formulation to remedy the unforeseen deterioration of glargine insulin when stored in glass ampoules with an air space. The court reasons that the “background knowledge” of insulin science renders these new compositions obvious—although neither the problem nor its remedy is shown in the prior art.

The court today enlarges the criteria of invalidity, to include hindsight analysis of foreseeability of the problem and its solution, citing information in the inventor’s patent specification as prior art against the invention. The court thus adds to the unpredictability of judicial assessment of “obviousness.” I respectfully dissent.