Prevailing in an invalidation action involving a patent on the method for manufacturing biodegradable polymeric microparticles for skin care products

Representing the patentee Regen Biotech, Lee & Ko’s IP Practice Group secured a judgment from the Intellectual Property Trial and Appeal Board (the “IPTAB”) finding for patent validity in a patent invalidation action against Regen Biotech’s patent on the method for manufacturing biodegradable polymeric microparticles.  This was a patent dispute between manufacturers of biodegradable polymeric filler for use in skin care products, and the dispute was expected to have a significant impact in the beauty industry, depending on the outcome.

The counterparty argued that the novelty and inventive step of the patent-in-suit should be denied by picking and choosing certain disclosures scattered across different prior art references.  After analyzing the technical features of the patent-in-suit and the prior art in great depth, Lee & Ko’s IP Practice Group emphasized the differences between the two.  In particular, Lee & Ko’s IP Practice Group highlighted that the patent-in-suit was directed to a manufacturing method, and the desired effect could be achieved only by the chronological and organic combinations of each claim element according to the manufacturing method, forcefully noting that such features of the claimed manufacturing method must be fully considered when comparing with the prior art. 

In the end, the IPTAB sided with Lee & Ko’s arguments and found that the patent was not denied novelty or inventive step.  As to the inventive step, the IPTAB’s judgment, rather than dissecting the invention and focusing on the technical difficulty of deriving each claim element separately, carefully analyzed the difficulty of deriving the constitution of the invention as a whole.  This analysis is expected to serve as a precedent for judging inventiveness of manufacturing method inventions.