PTAB Not Always Bound By Previous Court Decisions Regarding Patent Validity

In Novartis AG v. Noven Pharm. Inc., Appeal 2016-1678-1679 (April 2017), Novartis appealed two PTAB decisions holding claims of two patents obvious over cited prior art (IPR2014-00549 and IPR2014-00550), arguing that previous judicial holdings of non-obviousness should control the PTAB's factual findings and that the claims should have been held non-obvious.

The two Novartis patents at issue (U.S. Patent Nos. 6,316,023 and 6,335,031) were from the same patent family and are directed to a pharmaceutical composition comprising rivastigmine (Exelon®) and an antioxidant for the treatment of Alzheimer's disease.  In separate decisions in the Delaware District Court (Novartis Pharm. Corp. v. Noven Pharm., Inc., 125 F. Supp. 3d 474 (D. Del. 2015)) and the Federal Circuit (Novartis Pharm. Corp. v. Watson Labs., Inc., 611 F. App'x 988 (Fed. Cir. 2015)), the courts held that the claims were not obvious in view of a certain combination of prior art cited in the