The Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board's obviousness determination based on its construction of the claimed expression "an amount effective to extend the time to disease progression in the human patient."
With regard to the inconsistent positions taken by Genetech during prosecution and in the inter partes review, the Federal Circuit stated that: "Genentech interpreted its own claim language [during prosecution], based on its own specification’s disclosure, as referring to a comparison to untreated patients. The examiner even provided Genentech with the very alternative option (“taxoid alone”) for which Genentech now advocates. Genentech expressly rejected this comparator during prosecution and instead clearly stated that it was effectiveness relative to an untreated patient. Genentech provided an unequivocal, direct response to the examiner’s inquiry—that the term “extend the time to disease progression” was compared to an untreated patient. Genentech’s comparator choice during prosecution of the ’441 patent applies equally to the same claim term that appears in the ’549 patent, which shares a specification and is in the same patent family."
Read the case here.