Three cases being argued next month at the Federal Circuit attracted amicus briefs. One of these cases is Restem, LLC v. Jadi Cell, LLC. In it, Restem appeals a judgment of the Patent Trial and Appeal Board in an inter partes review proceeding that found challenged claims not unpatentable. This is our argument preview.
In its opening brief, Restem explained that “[t]he claims at issue are simply directed to an isolated cell produced by a two-step process, wherein the produced isolated cell has a specified marker pattern.” In its brief, in turn, Restem made two arguments.
First, it argued, the Board reached “an improper claim construction, wherein it ‘read-in’ limitations to the claimed process steps to distinguish the Challenged Claims from the prior art.” Restem maintains the Board “relied on . . . unspecified implicit constructions as the basis for why an isolated cell produced according to the claimed process would not necessarily produce a cell having the recited markers.” In short, according to Restem, “the implicit claim constructions applied by the Board improperly read-in embodiments from the specification, as well as additional unspecified conditions, and disregarded express definitions in the [relevant] patent.”
Second, Restem argued, the Board “applied an improper standard for inherency of product-by-process claims.” According to Restem, if “the Board applied the correct standard,” then it “would have concluded that the prior art inherently anticipated the Challenged Claims.” Restem also presented an argument against a separate finding by the Board regarding a dependent claim. Restem contended “the Board’s determination as to dependent claim 9 is not supported by substantial evidence and should be reversed.”
In its response brief, Jadi argued “the Board correctly concluded that ‘isolated cell’ means ‘a cell population.'” “The Board’s factual findings related to its construction,” Jadi continued, “are supported by uncontested substantial evidence.” Moreover, Jadi explained that, “[t]o the extent the Court believes the Board’s constructions was legal error, it is harmless.” As for why, Jadi argued “[t]he Board did not rely on construction of this term in rendering” its decision. With respect to Restem’s second argument, Jadi suggested that it “is premised on a misunderstanding of the law and incorrect characterization of the record.” Lastly, Jadi argued, the “Board was not required to support its non-obviousness finding with respect to claim 9” because “it fully supported its non-obviousness finding with respect to claim 1.”
In its reply brief, Restem argued Jadi’s “attempts to explain away” the Board’s “critical errors and prop-up the Board’s decision completely miss the mark.” Restem maintained that “the isolated cells produced by the prior art are not necessarily the same as the claimed cells.”
A pro se individual, Timothy G. Dixon, CEO and Chairman of the Board of Therapeutic Solutions International, filed a document he styled as an amicus brief in support of affirmance.
Oral argument is scheduled to be heard on Thursday, November 7. We will keep track of this case and report on any developments.