A previous post reviewed a case where res judicata was applied by the USPTO. Today we consider another related topic - law of the case.

Law of the case doctrine makes an appellate court's decision on a legal issue binding on remand and in that appellate court on any subsequent appeal in the same case and with substantially the same facts. As such, the doctrine does not generally apply to questions of fact, for example, or later litigation with different parties. Three exceptions that may apply are where i) the evidence in a subsequent appeal contains new and different material evidence; (ii) there has been an intervening change of controlling legal authority; or (iii) the earlier ruling was clearly erroneous and would work a manifest injustice.

In Appeal 2022-000783, Application 16/700,706, the medical university of Graz (Graz) was attempting to cover a method for treating a method of treating arteriosclerosis - the hardening of arteries resulting from depositions of lipids, collagen and other fibrous elements. Claim 11 is representative of the claims on appeal:

A method of treating arteriosclerosis in a human or animal subject consisting of the step of administering nor-ursodeoxycholic acid or one pharmaceutically acceptable salt or ester thereof in an oral dosage form, wherein the oral dosage form is a controlled release dosage form that releases the nor-ursodeoxycholic acid or the one pharmaceutically acceptable salt or ester thereof only after the oral dosage form has reached the stomach or the gastro-intestinal tract

The parent application had previously been on appeal where the Board affirmed the rejections. The main differences in claim scope was that current claim 11 (above) used the transition phrase “consisting of” whereas the previous claim on appeal used “comprising” and the current claims on appeal deleted several instances of “at least.”

The Board first reviewed the doctrine of law of the case explaining that it generally bars retrial of issues that were previously resolved, as well as citing to the MPEP 706.07(h) which confirms that:

a Board decision in an application is the ‘law of the case,’ and is thus controlling in that application and any subsequent, related application.

The Board first noted that none of the exceptions apply to the present case, and then noted that while the law of the case doctrine therefore applied to the prior appeal decision, it did not preclude Graz from presenting arguments based on the amended claim language.

So, many of the arguments raised in the present appeal were dismissed under law of the case, but the Board did consider Appellant’s arguments relating to the amendment to the claims discussed above (as they were narrowing amendments).