Obviousness

News & Analysis as of

Federal Circuit Review | November 2016

Fraud-Detection Patent Claimed Patent-Ineligible Subject Matter - In FairWarning IP, LLC v. Iatric Systems, Inc., Appeal No. 2015-1985, the Federal Circuit affirmed the district court’s holding that FairWarning’s patent...more

Perfect Surgical Techniques, Inc. v. Olympus America, Inc. (Fed. Cir. 2016)

Diligence is a patent concept whose applicability was severely restricted under the changes in U.S. patent law created under the Leahy-Smith America Invents Act. Diligence is important when determining whether an invention...more

PTAB Reverses Obviousness Finding After Remand

The Patent Trial and Appeal Board (PTAB or Board) reversed its previous decision invalidating claims of a patent covering a coaxial cable connector after the US Court of Appeals for the Federal Circuit found that the PTAB...more

Federal Circuit Broadly Affirms PTAB’s Determinations on Analogous Art, Motivation to Combine References and Obviousness of Claims

The level of deference the Federal Circuit gives to the Board’s IPR decisions has been surprising to many practitioners, considering the Court’s reputation for reversing district court decisions. The trend of deference to...more

Roxane Laboratories, Inc. v. Camber Pharmaceuticals Inc. (Fed. Cir. 2016)

The patent prosecutor's art requires exquisite foresight, if not prescience, in balancing the requirements for specificity needed to satisfy the disclosure requirements of § 112 while anticipating efforts to design around the...more

Defendant Found To Infringe Valid Patent After Buprenorphine Trial.

Robinson, J. Findings of fact and conclusions of law following bench trial finding that the asserted claims of one patent are not obvious, the asserted claims of a second patent are obvious, and defendant infringes the valid...more

In re NuVasive Brings the Administrative Procedure Act to IPRs

NuVasive owns US 8,187,334, which claims certain spinal implants. Medtronic filed a petition challenging various claims of the ‘334 patent as obviousness over US 2002/0165550 (Frey) in view of US 5,860,973 (Michelson). ...more

Failure to Let Patent Owner Address Unpatentability Arguments Relied on by the Board Violates Administrative Procedures

The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same...more

Federal Circuit Rejects Patentee’s Effort to Narrow Claim Scope

One wrinkle of IPR practice is that patentees are often in the position of advocating a narrower claim scope than the challenger — just the opposite of what is usually seen in district court litigation. The narrowing...more

Kyle Bass is on a Roll: Four More Wins at the PTAB

On October 27, 2016, the PTAB issued four final written decisions invalidating claims of U.S. Patent No. 6,045,501 (“the ’501 Patent”) and U.S. Patent No. 6,315,720 (“the ’720 Patent”), covering Celgene’s Pomalyst® and...more

The Decision To Grant Rehearing En Banc In Apple v. Samsung

On October 7, 2016, the Federal Circuit issued another decision in the ongoing patent litigations between Apple and Samsung that began in the Northern District of California. The district court had found at summary judgment...more

Federal Circuit Review | October 2016

Withdrawal of Claims During Prosecution Can Trigger Prosecution History Estoppel In UCB, Inc. v. Yeda Research and Development Co., Ltd., Appeal No. 2015-1957, the Federal Circuit held that prosecution estoppel can apply even...more

Obviousness Inquiry Allows Flexibility in Considering Teachings of Prior Art

Addressing issues of obviousness, the US Court of Appeals for the Federal Circuit affirmed a finding of obviousness based on a flexible approach and further clarified the appropriate evaluation of secondary considerations...more

Federal Circuit Patent Updates - October 2016

Medtronic, Inc. v. Robert Bosch Healthcare (No. 2015-1977, -1986, -1987, 10/20/16) (Lourie, Dyk, Hughes) - Dyk, J. Denying petition for rehearing and confirming the Court's earlier order. “The Board's vacatur of its...more

Drug Administration Route Found Obvious

The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision affirming an examiner’s rejection of claims directed to oral inhalation of the drug zanamivir to treat influenza. The examiner rejected the...more

In Case You Missed It: Launch Links - October, 2016 #4

Some interesting links we found across the web this week: Design Patent Post-Grant: Is Anticipation Easier to Prove Than Obviousness? There’s much to anticipate from this article sharing some novel thoughts on...more

Biosimilar Litigation Update

With the U.S. biosimilar pathway created by the Biologics Price Competition and Innovation Act (BPCIA) now fully up and running, there are now seven ongoing biosimilar litigations in the U.S. Here are brief updates on recent...more

Design Patent Post-Grant: Is Anticipation Easier to Prove Than Obviousness?

Since the advent of AIA post grant practice four years ago, only 26 inter partes review petitions have been filed for design patents.1 The Patent Trial and Appeal Board issued 23 institution decisions, instituted 10 of those...more

Substantial Evidence Supports Determination of Reasonable Expectation of Success

In In re Efthymiopoulos, [2016-1003] (October 18, 2016) the Federal Circuit affirmed the PTAB decision that the claimed invention relating to the administration or an anti-influeza drug “by inhalation through the mouth alone”...more

An Inflectra Update -- Pfizer Announces Launch of REMICADE® Biosimilar

On April 5, 2016, the FDA approved Celltrion's application to market a biosimilar to Janssen Biotech Inc.'s REMICADE® (infliximab) anti-TNF-a antibody (see "FDA Approves Inflectra - Celltrion's REMICADE® Biosimilar"). ...more

PTAB Upholds Lialda Patent Over Kyle Bass IPR Challenge

The USPTO Patent Trial and Appeal Board (PTAB) has issued a final written decision upholding Shire’s Lialda® patent over the Inter Partes Review (IPR) challenge brought by Kyle Bass and his Coalition for Affordable Drugs. The...more

Purported Public Interest Group Challenges Drug Patent in Qui Tam Action

The intersection of patent law, drug regulations, creative lawyering, and commerce (if not outright greed) has once again arisen in a qui tam suit brought under 31 U.S.C. §§ 3729–3733 (alleging fraud against the U.S....more

Practical Implications from the Federal Circuit’s Rare en Banc Reversal in Apple v. Samsung

In a precedential opinion issued en banc on Friday, October 7, 2016, the Federal Circuit overturned a panel decision, affirming and reinstating the district court’s judgment and the jury’s verdict. The majority opinion...more

Smartphone Patent War: En Banc Federal Circuit Rebukes Earlier Panel Decision and Reinstates Jury Verdicts for Apple against...

In its October 7 en banc decision in Apple v. Samsung, the US Court of Appeals for the Federal Circuit, without benefit of en banc briefing, issued an unusual opinion overturning a panel decision for the purpose of...more

Accused Infringer Puts the Screws on Patentee

We wrote recently about a summary judgment decision in which Judge Indira Talwani found certain asserted claims of two patents on a type of breakable screw to be obvious in light of the prior art. This ruling came even though...more

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