Obviousness

News & Analysis as of

Double Patenting Decision Delivers Bitter Pill To Antibody Patent

In a recent decision on obviousness-type double patenting, Judge Wolf shortened the shelf life of a dispute between Janssen Biotech, Inc. (“Janssen”) and Celltrion Healthcare Co. Inc. (“Celltrion”), relating to a...more

Preliminary Injunction Granted Due to Weakened Invalidity Defense in Light of Inter Partes Review Decision

A judge in the Northern District of California has enjoined a group of defendants from selling a laboratory DNA sequencing machine. The plaintiff first asserted the patent against one defendant in litigation in the District...more

Four Years of IPRs: Lessons from Proceedings for the Cabilly II Patent

It has been four years since the first inter partes review proceedings were filed in the United States. The first IPR petition, filed on September 16, 2012 (the first day IPRs became available), made it all the way to the...more

Federal Circuit Reverses PTAB’s Conclusion that Claims Challenged in Reexamination Would Have Been Obvious

Federal Circuit Reverses PTAB’s Conclusion that Claims Challenged in Reexamination Would Have Been Obvious - On August 31, 2016, the Federal Circuit issued a non-precedential opinion reversing a judgment by the Patent...more

Federal Circuit: Go whole-hog on validity below if you want to contest an independent determination of invalidity on appeal

Think you’ve won on validity at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) and your claims are safe on appeal? “Not so fast,” says the Federal Circuit in Software Rights Archive, LLC v....more

News from Abroad: Canada's Federal Court Questions No File Wrapper Estoppel on Claim Construction

The Supreme Court of Canada in Free World Trust v Électro Santé Inc, 2000 SCC 66 rejected the use of extrinsic documents such as file wrappers (patent prosecution histories) for claim construction, on the basis that allowing...more

PTAB Life Sciences Report - September 2016

About the PTAB Life Sciences Report: Each week we will report on recent developments at the PTAB involving life sciences patents. Amerigen Pharmaceuticals Limited v. UCB Pharma GmbH - PTAB Petition: IPR2016-01665;...more

Federal Circuit Holds PTAB Unreasonable in Denying Motion to Amend

In Veritas Technologies LLC v. Veeam Software Corp., Appeal No. 2015-1894 (Fed. Cir. Aug. 30, 2016), the Federal Circuit affirmed the PTAB’s conclusion of obviousness but vacated its denial of a conditional motion to amend...more

PTAB Reversed Based on Non-Analogous Art Theory

Although In re Natural Alternatives LLC (Fed. Cir. August 31, 2016) is not an IPR appeal, it should be of interest to those who care about IPRs and PGRs because it reflects a successful appeal from the Patent Trial & Appeal...more

PTAB Life Sciences Report - August 2016

About the PTAB Life Sciences Report: Each week we will report on recent developments at the PTAB involving life sciences patents. Illumina, Inc. v. Scripps Research Institute - PTAB Petition: IPR2016-01619; filed...more

Common Sense Is Not So Common-ly Obvious

Almost a decade has elapsed since the Supreme Court’s decision in KSR Int’l Co. v. Teleflex, Inc. altered the law of patent obviousness. In reversing the judgment of the Federal Circuit, the Court in KSR limited the...more

Apotex v Wyeth Explores Structural Obviousness

Lately, I’ve been feeling that the only case law engaging enough to write about has involved S. 101 issues, so it was a welcome break to comment on some classic principles of organic chemistry. Apotex filed an IPR...more

Prevailing Party Before PTAB May Not Appeal

Addressing the right of a prevailing party to appeal a favorable decision, the US Court of Appeals for the Federal Circuit dismissed an appeal of a case from the Patent Trial and Appeal Board (PTAB or Board) and ruled that...more

Federal Circuit Rebukes PTAB for Shifting Burden of Proof to Patentee in IPR

Reaffirming the petitioner’s burden of proof codified in 35 USC § 316(e), the US Court of Appeals for the Federal Circuit reversed the decision of the Patent Trial and Appeal Board (PTAB or Board) finding the patent owner’s...more

First Application of Supreme Court’s Halo Willfulness Framework

In its first post-Halo decision on willful infringement, the US Court of Appeals for the Federal Circuit unanimously affirmed the district court’s award of enhanced damages in WBIP LLC v. Kohler Co., Case Nos. 15-1038; -1044...more

Genzyme Petitions Federal Circuit for Rehearing in Genzyme Therapeutic Products, Inc. v. Biomarin Pharmaceutical, Inc.

Many of the complaints from patent holders over the PTO's inter partes review process under the Leahy-Smith America Invents Act (codified in pertinent part at 35 U.S.C. §§ 311-319) stem from how the Office has implemented...more

Federal Circuit Court of Appeals Limits Common Sense in Obviousness Determinations in Patent Claims

On August 10, 2016, the Federal Circuit Court of Appeals tightened the usage of common sense and in doing so clarified the criteria for applying it in an obviousness determination. Arendi S.A.R.L., Appellant v. Apple Inc.,...more

Federal Circuit Affirms Tygacil Formulation Patent

In Apotex, Inc. v. Wyeth LLC, the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (PTAB) finding that Apotex had failed to show that claims directed to a specific formulation of tigecycline...more

Ariosa Loses Verinata Patent Challenge

Fetal diagnostic pioneer Ariosa Diagnostics lost its latest attempt to invalidate competitor Verinata Health’s U.S. Patent No. 8,318,430, “Methods of Fetal Abnormality Detection.” The USPTO’s Patent Trial and Appeal Board...more

Federal Circuit Emphasizes that an Obviousness Analysis Based on Common Sense Must be Supported by Substantial Evidence and...

A recent decision by the Federal Circuit suggests that relying on “common sense” in analyzing whether a patent is obvious in view of prior art cannot always be based on common sense alone. In a decision providing...more

Arendi S.A.R.L. v. Apple, Inc. – Defining “Common Sense”

For some time, I have wanted to do a post on this recent Fed. Cir. decision (Appeal No. 2015-2073 (Fed. Cir. , August 10, 2016),) in which the Fed. Cir. panel of Judges Moore, Linn and O’Malley (writing) reversed a PTAB...more

PTAB Life Sciences Report

About the PTAB Life Sciences Report: Each week we will report on recent developments at the PTAB involving life sciences patents....more

PTAB Misapplied Common Sense in Finding Claims Obvious

In Arendi S.A.R.L. v. Apple Inc., [2015-2073] (August 10, 2016) the Federal Circuit reversed the PTAB Final Written Decision that claims 1-2, 8, 14-17, 20-21, 23-24, 30, 36-39, and 42-43 of U.S. Patent No. 7,917,843 were...more

Apotex Inc. v. Wyeth LLC (Fed. Cir. 2016)

Perhaps the most significant Supreme Court decision in the past quarter century for the working patent practitioner is Dickinson v. Zurko, which strictly speaking is less a patent case than an administrative law decision. ...more

Federal Circuit Vacates and Remands PTAB Obviousness Determination Not Supported by Adequate Reasoned Explanation

In In re Warsaw Orthopedic, Inc., 2015-1050, 2015-1058 (August 9, 2016), the Federal Circuit affirmed in part, vacated in part, and remanded the PTAB’s decision in IPR2013-00206 and IPR2013-00208 that claims 1–8 and 17–23 of...more

350 Results
|
View per page
Page: of 14
JD Supra Readers' Choice 2016 Awards

"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:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
×