In a significant development in patent law, the Patent Trial and Appeal Board (PTAB) may permit implicit findings of ‘reasonable expectation of success’ if they are intertwined with motivation to combine. This news comes in the wake of recent Federal Court opinions including landmark case BAXALTA INCOPORATED v. GENENTECH, INC., detailed on JD Supra.
In the case BAXALTA INCOPORATED v. GENENTECH, INC., the Court confirmed the district court’s granting of summary judgment that claims were invalid due to lack of enablement. Claim 1 of the asserted patent claimed all antibodies, with two key specifications: to bind to Factor IX/IXa, and to increase the procoagulant activity of Factor IXa.
The Federal Court’s decision in favour of the implicit finding reaffirms that the goal of promoting technological advancements and ensuring patents incentivise these innovations is paramount. In this context, the validation of ‘reasonable expectation of success’ as an implicit finding when linked to the motivation to combine, is a step forward in maintaining a robust patent system that continues to drive innovation.
Such rulings deepen our understanding of patent law nuances and their potential impacts on patenting strategy. Legal professionals, especially those charting intellectual property strategies for large corporations and law firms, should interpret this development with caution. By recognising the intertwined nature of motivation to combine and reasonable expectation of success, they can better navigate the complexities that continue to shape patent law.