Aug 21, 2023Legal
Fresh From the Bench: Latest Precedential Patent Case


Incept LLC v. Palette Life Sciences, Inc., Appeal Nos. 2021-2063, -2065 (Fed. Cir. Aug. 16, 2023)

In the Federal Circuit’s only precedential opinion this week, the Court affirmed inter partes review findings that challenged claims of Incept’s U.S. Patent Nos. 8,257,723 and 7,744,913 were invalid as anticipated or obvious over the prior art. Incept’s patents were generally directed to methods of radiation treatment for cancer involving the use of a “filler” injected into the treatment site to put distance between the tissue to be irradiated and surrounding organs, such that the surrounding organs receive less radiation than they would without the filler.

As relevant to the appeal, independent claims 1 of both patents required the filler to be “biodegradable” and “removable by biodegradation in the patient.”  Petitioner Palette’s primary prior art reference, Wallace, disclosed biocompatible gels with “biodegradable segments” that may be “distributed throughout the polymer’s molecular structure,” and which “degrade so as to break covalent bonds” in the filler polymer.  However, Wallace also disclosed that polymers are “essentially nondegradable in vivo over a period of at least several months,” and that its disclosed compositions are “not readily degradable,” which Incept argued taught away from the “biodegradable” and “removable by biodegradation” limitations.



Nika AldrichIP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C. 

Jason A. WrubleskiShareholder

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