Bound to Happen: Inherent Property Leaves No Question of Reasonable Expectation of Success

Written by: Sashank Krothapally and Nathan D. Reeves

CYTIVA BIOPROCESS R&D AB V. JSR CORP.

Before Prost, Taranto, and Hughes.  Appeal from the Patent Trial and Appeal Board.

Summary: A claim limitation merely reciting an inherent property or result of an otherwise obvious composition or process can be found obvious without finding a reasonable expectation of success.

JSR filed six inter partes reviews on three patents owned by Cytiva. The patents related to compositions for chromatography matrices and processes for isolating target compounds using those matrices. The Board held that all of the composition claims and most of the process claims were unpatentable, but found four dependent process claims not unpatentable. The Board held that JSR’s obviousness arguments regarding the dependent process claims required a showing of reasonable expectation of success. Cytiva appealed on the claims found unpatentable, and JSR cross-appealed on the four dependent claims found not unpatentable.

The Federal Circuit affirmed the Board’s decision that most of the challenged claims were unpatentable, and reversed the Board’s decision that the four dependent process claims were not unpatentable. The Court noted that the dependent process claims had no material differences from corresponding composition claims that the Board found unpatentable for merely reciting an inherent feature.  The Federal Circuit disagreed with the Board’s requirement that JSR show a reasonable expectation of success for the dependent process claims, since if a limitation of claim is inherent “there is no question of a reasonable expectation of success in achieving it.” Thus, because the dependent process claims merely recited the result of an inherent property of an otherwise obvious composition, the claims were obvious.

Editor: Sean Murray