Institut Pasteur & Universite v. Focarino, No. 12-1485 (Fed. Cir. 2013)Annotate this Case
Institut Pasteur owns three U.S. patents, which claim methods and tools for the site-directed insertion of genes into eukaryotic chromosomes. Precision requested inter partes reexamination of each. A Patent and Trademark Office examiner rejected a number of Pasteur’s claims for obviousness, under 35 U.S.C. 103.The Patent Trial and Appeal Board affirmed the rejections, concluding that the claimed inventions were obvious extensions of two prior-art references disclosing similar methods of targeting non-chromosomal DNA in prokaryotic cells. With respect to one patent, the Federal Circuit dismissed Pasteur’s appeal as moot, because Pasteur presented only substantively amended claims and amended claims cannot be entered after the patent has expired. With respect to another patent, the court reversed the Board’s conclusion as unsupported by substantial evidence and containing an erroneous obviousness analysis, including improper discounting of Pasteur’s objective indicia of non-obviousness. The court vacated the Board’s decision on the third patent and remanded for consideration of what motivation, if any, a skilled artisan at the relevant time would have had to pursue the claimed invention.