After reaching the same conclusion under a second, similar ground asserted by the petitioner, the board reviewed the patent owner’s objective evidence of nonobviousness, and concluded that it failed to show that the claim was not obvious. The board observed that, for such evidence to have merit, there must be a nexus between the objective evidence and a “novel element in the claim,” as opposed to something in the prior art. The only novel element of the challenged claim, according to the patent owner, was the biweekly dosing schedule. Because none of the objective evidence presented by the patent owner was tied to the dosing schedule, the board concluded that it failed to show that the challenged claim was not obvious.
BioMarin Pharm. Inc. v. Genzyme Therapeutic Prods. LP, Case IPR201300534 (PTAB Feb. 23, 2015).
