In a decision denying institution of inter partes review rendered on February 5, 2020 , the Patent Trial and Appeal Board (“Board”) stated “there is no general rule that efficacy language in a claim is non-limiting.” Gilead Sciences, Inc. v. United States, IPR2019-01455, Paper 16 at 26.  The decision held, inter alia, that whether efficacy language in a claim should be given patentable weight is a fact-based inquiry that includes examining the application as whole and the patent record.  Id. at 26, 30.  When the claims at issue have been granted in a patent that issued from a continuation application, the patent record includes that of the parent patent (e.g., and, if applicable, any grandparent) or parent patent application.
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