Surprising Federal Circuit Decision

Yesterday's Federal Circuit decision in Tobinick v. Olmarker is a real surprise. 

The Court reviewed a decision of the Patent Trial and Appeal Board in a patent interference that generally relates to local administration of a TNF-α antibody to relive the symptoms of a herniated disc.  Here's one of the Counts from the interference, corresponding to Tobinick claim 68:

A method of treating or alleviating one or more symptoms of a nerve disorder mediated by nucleus pulposus in a mammal in need of such treatment comprising the step of administering a therapeutically effective amount of a TNF-α inhibitor to the mammal, wherein said TNF-α inhibitor is an antibody that blocks TNF-α activity, wherein the antibody is administered locally.

The Board construed the claims, and granted Olmarker's motion for judgment that Tobinick's specification did not provide adequate written description support for the term "administered locally" under 35 USC 112, para. 1. 

Now, here's the interesting part.  The Federal Circuit reviews the Board's claim interpretation de novo.  Essentially, it's a complete do-over on claim construction.  It's generally acknowledged that taking your claim construction from the USPTO, or a court, to the Federal Circuit is a coin toss.  On the other hand, the Federal Circuit reviews the Board's factual findings using a much more deferential standard:  they are only set aside if the Court finds the Board's factual findings are not supported by substantial evidence, or are "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law." See, e.g., Falkner v. Inglis, 448 F.23 1357, 13663 (Fed. Cir. 2006).  This is not a tough bar to get over.  

So first, the Court reviews the Board's claim construction, and upholds it.  At this point, if you're representing the Appellee, you're feeling pretty confident.  The goal line is in sight, and you're inside the five-yard line.    Just a couple more steps...

Yes, that's right.  In a totally unexpected development, the Federal Circuit decides that the Board's factual findings are not supported by substantial evidence, and reverses.  

Wow.  Just wow.