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MWZB Scores Big at the Federal Circuit

November 10, 2017 – Mike Culver, with the help of Richard Traverso and Csaba Henter on the briefs, successfully persuaded the Federal Circuit to unanimously affirm the PTAB's (the Board) rejection of all claims of US Patent 6,673,532, ('532) on behalf of client, PreSens Precision Sensing GmbH, of Regensburg, Germany (PreSens).

The '532 patent, assigned to the University of Maryland, claimed methods of measuring at least two cultivation parameters in a bioreactor using multiple (at least two) optical chemical sensors positioned in the bioreactor itself. PreSens filed a request for Inter Partes Reexamination of this patent, which was granted in 2011. Despite significant amendments and lengthy prosecution, the Examiner rejected all claims on multiple grounds. The PTAB reversed or ignored all but one of the rejections for obviousness.

The University of Maryland's primary argument on appeal was that the design of the equipment used in the "primary" prior art reference with its sensors positioned outside the bioreactor was so different that 1) it could not be modified to arrive at the claimed invention and 2) it taught away from the claimed feature of using multiple optical chemical sensors positioned within a bioreactor.

In response, PreSens argued that the Board did not rely on the "primary" prior art reference for teaching the configuration/location of the optical sensors within the bioreactor. That instead, the Board found another reference taught essentially all of the features of the claimed invention, including positioning optical sensors within the bioreactor, for rejecting the claims.

The Federal Circuit agreed finding the suggested combination would not require a substantial reconstruction and redesign of the elements shown in the reference relied on by the Board. The court found no error in the Board's conclusion that the combined teachings rendered the claims obvious, regardless of teachings by one reference to position of the sensors outside of the bioreactor.

As to teaching away, citing In re Ethicon, Inc. 844 F.3d 1344, 1351 (Fed. Cir. 2017). The court found the configuration of sensors positioned outside of the bioreactor by the "primary" reference was simply an alternative design and not a "clear discouragement" to positioning the sensors in the bioreactor.

A copy of the Opinion is available here.

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