News & Analysis as of

Obviousness

Novartis’ Gilenya Patent Invalidated as Obvious

On April 12, 2017, the Federal Circuit affirmed the determination by the US Patent and Trademark Office (USPTO), Patent Trial and Appeal Board (Board) that the claims of U.S. Patent No. 8,324,283 (“the ’283 patent”) were...more

Federal Circuit to PTAB: No Short Cuts Allowed

Today, the Federal Circuit, vacated-in-part and remanded the Patent Trial and Appeal Board’s obviousness determination regarding a Securus Technologies patent directed to systems and methods for reviewing conversation data...more

No Nexus For Novartis Gilenya Patent

by Foley & Lardner LLP on

In Novartis AG v. Torrent Pharmaceuticals Ltd., the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (PTAB) invalidating all claims of U.S. Patent 8,324,283, which is one of four Orange...more

Novartis AG, LTS et al. v. Noven Pharmaceuticals, Inc. – Prior Judicial Opinions Don’t Bind the PTAB

After Novartis’ patents were found nonobvious by the Fed. Cir., affirming the Delaware District Court, defendant Noven filed for inter partes review (IPR) of U.S. Pat. Nos. 6316023 and 6335031, on rivastigmine and an...more

Just How Predictable Must the Invention Be to Lose Patent Protection? Depends on the Inventive Concept

by Bennett Jones LLP on

Only a true invention can be patented; a patent claim to an invention is not valid if the invention was obvious. Assessing obviousness can be thought of as bridging the gap between two cliffs: on one side is the existing...more

Novartis AG v. Torrent Pharmaceuticals Ltd. (Fed. Cir. 2017)

Can a prior art reference that does not contain a teaching sufficient enough to allow it to be used in an obviousness combination nevertheless be used as a background reference for evidence of motivation to combine? ...more

Different Burdens of Proof and Different Records Allowed Different Conclusions on Validity by the PTAB and District Court

In Novartis AG v. Noven Pharmaceuticals Inc., Nos. 16-1678, -1679 (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed the PTAB’s decisions finding obvious certain patents that were previously found nonobvious in district...more

Federal Circuit Affirms PTAB’s Obviousness Holding for Novartis’s Dementia Drug Patents

The Federal Circuit affirmed the PTAB’s final written decisions holding that claims directed to Novartis’s dementia drug compositions containing Exelon were obvious in Novartis AG v. Noven Pharm. Inc., No. 2016-1679 (Fed....more

Federal Circuit Affirms Obviousness of Novartis’s Patent for Multiple Sclerosis Drug

The Federal Circuit affirmed the PTAB’s final written decision holding that claims directed to Novartis’s multiple sclerosis drug Gilenya were obvious in Novartis AG v. Torrent Pharmaceuticals. Ltd., No. 2016-1352 (Fed. Cir....more

Just Because the Board Didn’t Say It, Doesn’t Mean that the Board Didn’t Think It

In Novartis AG v. Torrent Pharmaceuticals Limited, [2016-1352] (April 12, 2017), the Federal Circuit affirmed the PTAB’s determination that the challenged claims of U.S. Patent No. 8,324,283, and Novartis’ proposed substitute...more

Federal Circuit Patent Updates - April 2017

by WilmerHale on

Affirming judgment of noninfringement of one patent and reversing judgment of infringement of another patent. All asserted claims required a particular process step, construed as defined by one example in the specification,...more

When is a Missing Feature Not There?

TDY industries received a patent (US 7,244,519) for a cutting tool with a binder comprising ruthenium and a physical vapor deposition (PVD) coating. TDY then sued Ingersoll Cutting Tool Co. for infringement of the ‘519 patent...more

Evidence of Priority to Provisional Application and that Prior Art Was Not Work of Another Defeated Obviousness Challenge in IPR

The Patent Trial and Appeal Board (the “Board”) issued a final written decision determining that the Coalition for Affordable Drugs (ADROCA), LLC (“Petitioner”) failed to prove unpatentable claims 1-52 of U.S. Patent No....more

PTAB Life Sciences Report -- Part IV

About the PTAB Life Sciences Report: Each month we will report on developments at the PTAB involving life sciences patents. Smith & Nephew, Inc. v. ConforMIS, Inc. PTAB Petition: IPR2017-00778; filed January 26,...more

Novartis v. Noven: The PTAB is not Bound by Prior Decisions of District Courts

Novartis, together with LTS Lohmann Therapie-Systeme, owns a pair of patents covering rivastigmine transdermal patches. These patches are useful for treating Alzheimer’s disease. Noven Pharmaceuticals filed an abbreviated new...more

IPR Tracker: IPR2016-00258 (U.S. Pat. No. 9,051,556) (Green Cross Corp.) – Final Written Decision

by Goodwin on

The PTAB issued a Final Written Decision in IPR2016-00258, wherein Petitioner Green Cross Corp. challenged claims 1-3, 16, and 17 of Shire Human Genetic Therapies, Inc.’s U.S. Patent No. 9,051,556. Green Cross, which is...more

In Rare Final Written Decision for “Anti-Troll” Group, Lack of Expert Declaration Dooms Patent

Petitioner Unified Patents, LLC filed an IPR petition challenging 29 claims of US Pat. No. 8,640,183 owned by Convergent Media Solutions, LLC. Unified’s numerous inter partes review (“IPR”) petitions rarely reach a final...more

Insufficient Showing of Public Availability of Prior Art and Strong, Unrebutted Evidence of Commercial Success Defeats IPR...

The Patent Trial and Appeal Board (PTAB) has issued a final written decision determining that the Coalition for Affordable Drugs VIII, LLC (“Coalition” or “Petitioner”) failed to demonstrate that claims 1-10 of U.S. Patent...more

PTAB Life Sciences Report -- Part I - April 2017

About the PTAB Life Sciences Report:  Each month we will report on developments at the PTAB involving life sciences patents. Merck Sharp & Dohme Corp. v. Genentech, Inc. - PTAB Petition:  IPR2017-00047; filed...more

Federal Circuit Review | March 2017

Federal Circuit Remands IPR Final Decision For Inadequate Obviousness Analysis, Sidesteps Issue of Proper Claim Construction Standard - In Personal Web Technologies, LLC v. Apple, Inc., Appeal No. 2016-1174, the Federal...more

PTAB Invalidates Two Anacor KERYDIN® Patents

by Jones Day on

The PTAB found obvious all claims of U.S. Patent Nos. 7,582,621 and 7,767,657 in the three final written decisions issued on February 23, 2017 (IPR2015-01776, IPR2015-01780, and IPR2015-01785). This marks another victory for...more

Factual Findings Required to Show “Apparent Reason to Combine”

by McDermott Will & Emery on

Addressing issues of obviousness and anticipation in the context of an inter partes review, the US Court of Appeals for the Federal Circuit issued two decisions with respect to the same patent, vacating and remanding the...more

Obviousness Does Not Speak for Itself

by McDermott Will & Emery on

Addressing the issue of evidence required for a sustainable obviousness determination, the US Court of Appeals for the Federal Circuit vacated a Patent Trial and Appeal Board (PTAB) finding of obviousness of the challenged...more

Patentee’s Teaching Away Argument Fails to Overcome Substantial Evidence of Unpatentability

An obviousness challenge can be overcome by showing the prior art teaches away from the claimed invention. However, “teaching away” is a question of fact and thus subject to the substantial evidence standard in appeals from...more

Troll Gets Rolled Because Its Disclaimer Statements Were Undersold

In MPHJ Tech v. Ricoh Corp., the Federal Circuit affirmed a conclusion of anticipation and obviousness from an Inter Partes Review involving US 8,488,173 (‘173). The content of the art was not really in dispute. Rather, the...more

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