Withholding Data That PTAB Would Deem Relevant To Patentability Supports Adverse Judgment In An IPR

The Patent Trial and Appeal Board (PTAB) granted Petitioner's motions to sanction Patent Owner for failure to meet its duty of candor and fair dealing in five related inter partes review proceedings. The PTAB found that Patent Owner had improperly withheld the results of scientific testing that was material to the challenged patent claims.

The challenged patents relate to methods and compositions for killing pathogens and isolating populations of nucleic acids from biological samples. In its decisions to institute inter partes review, the PTAB rejected what it considered Patent Owner's overly narrow construction of the terms "kill pathogens" and "not degrade nucleic acids," construing each term to have its plain meaning. In the patent owner response and motion to amend, patent owner relied on test data and its proposed constructions to argue that the primary prior art reference did not anticipate the challenged claims.