Obviousness

News & Analysis as of

More Misinformation Regarding the Patent System and Non-Practicing Entities

The press has been all too eager to decry the so-called "broken" U.S. patent system and the alleged "scourge" of non-practicing entities (NPEs). However, few if any articles attempt to provide an even-handed analysis of...more

Failure to Address All Graham Factors Dooms CBM Petition

Travelocity.com L.P. v. Cronos Technologies LLC - Addressing the showing required to institute covered business method (CBM) proceedings based on obviousness, the U.S. Patent and Trademark Office Patent Trial and...more

Federal Circuit Says Secret Prior Art Is Prior Art for All Purposes

In Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc., the Federal Circuit agreed with the district court that Ethicon’s prototype constituted prior art under 35 USC § 102(g) based on its earlier date of conception, but...more

PR Obviousness Challenge of Design Patent Denied

Through two years of inter partes review practice, only 8 petitions were filed that were directed to design patents (out of 1773 total petitions). Given this limited number of petitions, lessons are going to be difficult to...more

Patent Ever-Greening: Not So Obvious

Although the Federal Circuit recently affirmed a district court’s decision on patent invalidity based on obviousness-type double patenting, the case provides an impetus to review terminal disclaimer practice within a patent...more

IP Newsflash - December 2014

Federal Circuit Vacates Lower Court’s Obviousness Finding Based on Incorrect Application of Inherency Doctrine - In Par Pharmaceutical, the Federal Circuit vacated an obviousness ruling by the district court, finding...more

The Latest on Inherent Obviousness

On December 3, 2014, the Federal Circuit issued a decision in Par Pharmaceutical, Inc. and Alkermes Pharma Ireland Limited v. TWI Pharmaceuticals, Inc., agreeing with the district court’s analysis and conclusions on...more

Patentee May Cancel but May Not Substitute Claims when Proposed Amended Claims Are Not Shown To Be Unobvious

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. - Addressing the burden of establishing the patentability of claim amendments in inter partes review (IPR), the U.S. Patent and Trademark Office Patent Trial and...more

PTAB Update -- Amending Claims in an IPR Proceedings

Just what does it take to amend your claims during an IPR proceeding before the PTAB? Of course, the America Invents Act ("AIA") specifically provides that Patent Owners may file one motion to amend the claims. AIA, §...more

Federal Circuit Notes High Burden of Invoking Inherency for Obviousness

In Par Pharmaceutical Inc. v. Twi Pharmaceuticals, Inc., the Federal Circuit vacated and remanded the district court decision holding the Par claims at issue obvious. The district court decision rested in part on the doctrine...more

District Court Obviousness Determination Not Up to Par®

Inherent obviousness over a combination of references - Par Pharma is the exclusive licensee of US 7,101,576, which claims a method of treating wasting diseases by administering megestrol acetate. ...more

Design Patent Case Digest: High Point Design LLC and Meijer, Inc., Sears Holding Corp. and Wal-Mart Stores, Inc. v. Buyers Direct,...

Decision Dates: September 11, 2013 and March 26, 2014 - Courts: Federal Circuit and the Southern District of New York Patent: D598,183 - Holding: Grant of summary judgment of invalidity REVERSED and REMANDED; on...more

No En Banc Review for Use of Post Invention Information in Obviousness Analysis

Bristol-Myers Squibb Co. v. Teva Pharms USA, Inc. - Declining to reconsider its panel decision holding that a pharmaceutical was obvious where a skilled artisan would have altered the lead prior art compound in the...more

Seeing Beyond the Doggie Wear: What MCR Innovations Teaches about the Obviousness of Design Patents in the Garment Industry

In the United States, patent protection can be afforded to aesthetic innovation (design patents), and functional innovation (utility patents). Because binding precedent relating to design patents is relatively sparse,...more

PTAB Refuses to Give Petitioner a Second Chance to Articulate Reasons for Invalidity

November 10, 2014 – In a decision denying institution of inter partes review, the PTAB executes it discretion under 35 U.S.C. § 325(d) to refuse to give a petitioner a second chance to provide invalidity arguments....more

“Soda-Pop” Bottle Caps Can Be Analogous Art for Flash Chromatography Cartridges

Scientific Plastic Products, Inc. v. Biotage AB - Addressing the issue of analogous art in the context of inter partes reexamination, the U.S. Court of Appeals for the Federal Circuit affirmed a decision of the U.S....more

Ornamental Feature of Claim Given No Patentable Weight by PTAB in Obviousness Analysis

Not all claim limitations are treated equally. In Crocs, Inc. v. Polliwalks, Inc., IPR2014-00424, involving US Pat. No. 8,613,148, the Board addressed an argument for patentability based on an ornamental feature found in the...more

PTAB Discusses Nexus in Secondary Considerations Argument

There have been many attempts by Patent Owners to rebut a prima facie case of obviousness by pointing to secondary considerations of non-obviousness. To date, such efforts have been unsuccessful....more

Inter Partes Review: Validity Before the PTAB [Video]

The PTAB is beginning to develop a reputation as being harsh towards patent owners and the validity of their patents. Why have patent owners struggled so much before the PTAB? Attorneys Seth Northrop and Cyrus Morton discuss...more

PTAB on Analogous Art

Schott Gemtron Corp. v. SSW Holding Co., Inc. - In a final written decision addressing the patentability of claims challenged as obvious, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB, the...more

No Motivation to Combine Where Combination Requires Complete Redesign

Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. - In a final written decision for two consolidated inter partes review (IPR) proceedings, the U.S. Patent and Trademark Office’s Patent Trial and Appeal...more

Patent Owners: Better Address All Obviousness Arguments Raised by Petitioner

Pharmatech Solutions, Inc. v. LifeScan Scotland Ltd. - In a final written decision addressing an obviousness challenge, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB, the Board) found the...more

Dissents and Concurrences Popping up in IPR Proceedings

The PTAB has been remarkably consistent to date in its decisions regarding the variety of issues in inter partes review practice. Issues both simple and complex have typically been resolved by one panel and future panels,...more

Federal Circuit Judges Disagree on Use of Post Filing Date Evidence of Nonobviousness

On October 20, 2014, the Federal Circuit issued an order denying the petition for rehearing or rehearing en banc filed in Bristol-Meyers Squibb Co. v. Teva Pharmaceuticals, USA, Inc. While the order itself may not be...more

PTAB Disqualifies Art as Being Non-Analogous to Claimed Invention

A limited number of cases, to date, have dealt with the issue of analogous prior art in an obviousness analysis. In Schott Gemtron Corp. v. SSW Holding Co., IPR2014-00358, the Board addressed this type of issue, finding in...more

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