Edward Tobinick v. Kjell Olmarker and Bjorn Rydevik

Docket No. 2013-1499

May 19, 2014

Brief Summary: PTAB claim construction decision affirmed based on intrinsic evidence and expert testimonry. The lack of written description decision was reversed because the application conveyed “that Tobinick had possession of at least one embodiment that meets the Board’s construction of local administration.”

Summary: Tobinick appealed PTAB (“Board”) decision in an interference proceeding that “administering locally” in claims relating to methods of inhibiting TNF-α using a mAb to the site of an affected nerve for treating spinal cord injuries means administration “directly to the site where it is intended to act, that is, to the location where the nucleus pulposus is causing the symptoms of the nerve disorder” (the nucleus pulposus is normally found within the disc but can protrude with injury). It also decided that Tobinick’s patent application did not contain written description support for the interference count. As discussed below, the FC agreed with the claim construction decision based on the intrinsic evidence of the Olmarker/Rydevik patents (“the originating disclosure provides the meaning of the pertinent claim language”) and expert testimony. But it reversed the written description decision. The Board concluded Tobinick’s application lacked sufficient written description “because it did not sufficiently delineate between local and non-local administration.” The FC panel disagreed because the specification “describes administering an inhibitor to the epidural space adjacent to a herniated disc, which is the location where nucleus pulphosus causes nerve injury” and “‘reasonably conveys to those skilled in the art’ that Tobinick ‘had possession’ of the claimed local administration” (e.g., “[a] person of ordinary skill in the art would understand this type of epidural injection to be an injection into the location where the TNF-α is injuring spinal nerves…The ‘205 application need only reasonably convey to one skilled in the art that Tobinick had possession of at least one embodiment that meets the Board’s construction of local administration.”) Thus, the Board’s decision to dismiss the interference was reversed and remanded for further proceedings.

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