News & Analysis as of

Motivation to Combine

Sheppard Mullin Richter & Hampton LLP

Conclusory Assertions Won’t Cut It: Federal Circuit Provides Further Insight into the Motivation to Combine Analysis

In Virtek Visions international ULC v. Assembly Guidance Systems, Inc., DBA Aligned Vision Nos. 2022-1998, 2022-2022 (Fed Cir. Mar. 27, 2024), the Federal Circuit reviewed the Patent Trial and Appeal Board’s findings...more

Bradley Arant Boult Cummings LLP

Spring Has Sprung Obviousness Trends from the Federal Circuit

There have been only a few precedential decisions from the Federal Circuit related to obviousness since spring sprung. While these decisions have produced mixed results for the lower courts, clinical study protocols have held...more

AEON Law

Patent Poetry: Federal Circuit Finds No Motive to Combine in Laser Projector Patent Case

AEON Law on

The Federal Circuit has reversed a finding by the Patent Trial and Appeal Board (PTAB or Board) that certain challenged claims of a patent for a method for aligning a laser projector with respect to a work surface are...more

McDermott Will & Emery

Is Evidence of All Claimed Elements in Prior Art Enough? Not Without Motivation to Combine

The US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board obviousness decision, finding that disclosure in the prior art of all recited claim elements across multiple references, without more,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Axonics, Inc. v. Medtronic, Inc., 73 F.4th 950 (Fed....

Axonics petitioned for IPR of two patents owned by Medtronic. The challenged claims relate to a neurostimulation lead and a method for implanting and anchoring the lead. The patents’ “Field of the Invention” section states...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Volvo Penta of the Americas, LLC v. Brunswick Corp., 81...

Volvo Penta appealed from a Board decision finding all of its claims unpatentable as obvious. The claims at issue covered a tractor-type stern drive for a boat. Volvo Penta raised three main issues on appeal, arguing (1) that...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Elekta Limited v. Zap Surgical Systems, Inc. 81 F.4th...

Zap filed an IPR petition alleging obviousness of a patent owned by Elekta. The petition relied on a combination of two references. The Board found a reason to combine the references and ultimately found obviousness of the...more

Sheppard Mullin Richter & Hampton LLP

The Intertwining Nature of Motivation to Combine and Reasonable Expectation of Success

In Elekta Limited v. Zap Surgical Systems, Inc., No. 21-1985 (Fed. Cir. Sept. 21, 2023), the case addresses the interplay between findings related to motivation to combine and reasonable expectation of success in determining...more

McDermott Will & Emery

A Matter of Style: No Need to Select “Primary” Reference in Obviousness Challenge

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed an obviousness decision by the Patent Trial & Appeal Board, explaining that nothing requires a petitioner to identify a prior art reference as a “primary reference” in...more

McDermott Will & Emery

No Need To Be Explicit: Implicit Finding of Expectation of Success Is Sufficient

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board unpatentability decision, finding that a combination of prior art references only requires an implicit indication of a reasonable...more

Knobbe Martens

Prosecution History May Support a Motivation to Combine

Knobbe Martens on

Elekta Limited v. Zap Surgical Systems, Inc. Before: Reyna, Stoll, and Stark. Appeal from the Patent Trial and Appeal Board. Summary: Patentee’s failure during prosecution to distinguish relevant art provided support...more

Akin Gump Strauss Hauer & Feld LLP

Second Circuit Holds That Syndicated Term Loans Are Not Securities

Key Points - On August 24, 2023, a three-judge panel of the 2nd Circuit unanimously held that the syndicated term loans at issue were not “securities” under the test articulated by the Supreme Court in Reves v. Ernst &...more

McDermott Will & Emery

Hit a Nerve? Obviousness Inquiry Must Address Claims at Issue

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board non-obviousness decision, finding that the context of the proposed combination of prior art in the Board’s obviousness inquiry...more

McDermott Will & Emery

Under High Pressure: New Mechanism of Action Can’t Save Drug Administration Claims

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board ruling that method claims reciting a mechanism of action triggered by the co-administration of two known antihypertensive agents were...more

McDermott Will & Emery

Breaking Up Is Hard to Do: Validity Upheld Based on Expert Separation Testimony

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a district court decision finding that two patents covering enantiomerically pure compositions of the psoriasis drug Otezla® (apremilast) were valid and one patent...more

McDermott Will & Emery

Prior Art Coherency and Cache Incoherency: “Known-Technique” Rationale for Motivation to Combine

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit, addressing the issue of whether certain factual and legal conclusions relating to obviousness were supported by substantial evidence, held that the Patent Trial & Appeal Board...more

McDermott Will & Emery

You Can’t Skirt around Obviousness by Arguing Expectation of Success Must Be Absolute

McDermott Will & Emery on

Affirming an obviousness decision by the Patent Trial & Appeal Board (Board), the US Court of Appeals for the Federal Circuit explained that the expectation of success need only be reasonable and not absolute. Transtex Inc....more

McDermott Will & Emery

Sleep Better: Amendments Proposed during IPR Deemed Proper and Valid

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s (Board) finding that proposed amendments made during an inter partes review (IPR) are valid and proper despite the inclusion of...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights Newsletter: May 2022: Split Panel Weighs General Skepticism Differently in Obviousness Inquiry

In a recent opinion by the Federal Circuit, Auris Health, Inc. v Intuitive Surgical Operations, Inc., Case 2021-1732, the panel split on the weight of general industry skepticism in an obviousness analysis and split on...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights Newsletter: May 2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

McDermott Will & Emery

Robotic Skepticism May Not Trump Motivation to Combine

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board (Board) decision finding the challenged claims patentable because the Board impermissibly rested its motivation-to-combine...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2022

Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc., Appeal Nos. 2020-1640, -1641 (Fed. Cir. Apr. 29, 2022) - Our case of the week has a little bit for everyone, including lost profits, reasonable royalties,...more

McDonnell Boehnen Hulbert & Berghoff LLP

Almirall, LLC v. Amneal Pharmaceuticals LLC (Fed. Cir. 2022)

The Federal Circuit addressed questions of motivation to combine and reasonable expectation of success in finding obviousness as well as when an obviousness determination by the Patent Trial and Appeal Board is supported by...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: SynQor, Inc. v. Vicor Corp., 988 F.3d 1341 (Fed....

SynQor, Inc. appealed the inter partes reexamination decision of the Patent Trial and Appeal Board (Board) holding un- patentable as obvious original claims 1–19, 28, and 31 of SynQor’s patent, U.S. Patent No. 7,072,190 as...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

63 Results
 / 
View per page
Page: of 3

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide