Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Tobinick v. Olmarker

United States Court of Appeals, Federal Circuit

May 19, 2014

EDWARD TOBINICK, Appellant,
v.
KJELL OLMARKER AND BJORN RYDEVIK, Appellees

Page 1221

Appeal fro the United States Patent and Trademark Office, Patent Trial and Appeal Board in Interference No. 105,866.

REVERSED.

ROBERT HAHL, Neifeld IP Law, PC, of Alexandria, Virginia, argued for appellant. With him on the brief was RICHARD A. NEIFELD.

TODD R. WALTERS, Buchanan, Ingersoll & Rooney PC, of Alexandria, Virginia, argued for appellees. With him on the brief was ERIN M. DUNSTON.

Before LOURIE, REYNA, and WALLACH, Circuit Judges.

OPINION

Page 1222

Reyna, Circuit Judge

This appeal arises out of an interference proceeding before the Patent Trial and Appeal Board (" Board" ) at the United States Patent and Trademark Office (" PTO" ) relating to drug treatments for spinal nerve injuries. The Board construed " administered locally" as administering the claimed therapeutic compound " 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." Based on this construction, the Board found that Edward Tobinick's (" Tobinick" ) patent application did not contain written description support for the interference count. Without written description support for the count, Tobinick lacked standing to bring the interference, and the Board dismissed. See 37 C.F.R. § 41.201(2)(ii).

On appeal, the parties dispute the meaning of " administered locally" and whether Tobinick's patent application contains written description support for this claim limitation. We agree with the Board's claim construction but reverse its written description decision and subsequent dismissal. We find that Tobinick's application contains sufficient written description support for local administration because it describes administering the relevant therapeutic compound to the epidural space adjacent to a herniated spinal disc, which is the site where the compound " is intended to act" and " the location where the nucleus pulposus is causing the symptoms of the nerve disorder." We therefore reverse.

Background

The technology at issue relates to drugs for treatment of spinal nerve injuries, such as those associated with herniated discs. Between spinal vertebrae are soft discs, referred to as " spinal discs," that permit the spine to flex and move by absorbing and distributing compressive forces. A spinal disc becomes herniated when tissue surrounding it tears. As a result, nucleus pulposus, a substance normally inside the disc, leaks out into the epidural space of the spine. Nucleus pulposus secretes a molecule called tumor necrosis factor-α (" TNF-α " ), a powerful signaler of inflammation and other injuries. The nerve roots that extend from the spinal cord to various parts of the body pass through the epidural space. When TNF-α comes into contact with nerve roots, it injures the nerves and may cause back pain or numbness. The nerve root injuries may be reduced or eliminated by " inhibiting" the activity of TNF-α . The patents and application at issue here disclose methods of inhibiting TNF-α via the local administration of a monoclonal antibody (the TNF-α inhibitor) to the site of an affected nerve.

Kjell Olmarker and Bjorn Rydevik (collectively " Olmarker" ) are the named inventors on the following related patents, each of which claims priority from an application filed on September 25, 1998:

U.S. Patent

Involved Claims

Issue Date

No.

7,708,995

12, 13

May 4, 2010

7,811,990

13, 22, 31, 40, 45,

Oct. 12, 2010

48, 49, 51

7,906,481

2, 20, 22, 32

Mar. 15, 2011

8,057,792

10, 11, 23, 24

Nov. 15, 2011

6,649,589

8, 18, 27, 34

Nov. 18, 2003


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.