Patent Law

PharmaStem Therapeutics Inc. v. ViaCell Inc. (on petition for certiorari, January 2008)

In 2007, the CAFC found two of PharmaStem’s stem cell cryopreservation patents to be invalid as obvious. [Patently-O][Decision] Now, PharmaStem has petitioned the Supreme Court for a writ of Certiorari and and opportunity to challenge the legal basis of the ruling.

The CAFC found the patents invalid based on prior art that had already been examined by the PTO. In addition to the standard examination, the patents had also been reexamined twice and the PTO confirmed the validity of the claims.

Now, PharmaStem asks for some greater level of deference to “PTO determinations that patent claims are valid over particular prior art.” Is there ever any issue preclusion?; and Does the presumption of validity strengthen after successful reexamination?

Notes:

• PharmaStem failed to discuss the CAFC’s finding that the Examiner’s reasons for allowance contained an important factual misstatement.
• The Brief makes issue of the fact that Judge Newman (who dissented from the appellate decision) has a PhD and worked as a research scientist while Judges Bryson and Prost are not scientists.  “If this breakthrough in using cord blood was not ‘inventive,’ it is difficult to imagine many biotechnological or pharmaceutical achievements that would be patentable. Most discoveries made by biotechnology and pharmaceutical companies are rooted in diligent application of the scientific method. As a former scientist, Judge Newman appreciated this in a way that her colleagues could not.”  Perhaps Judge Newman’s dissents should be given greater deference as well.
• Photo: Judges Bryson, Newman, and Prost intermingled with Nayar and Bunch in 2004.
• Reexamination Request