Obviousness

News & Analysis as of

Instructions Induced Prescribing Physicians to Infringe

In Eli Lilly and Company v. Teva Parenteral Medicines, Inc., [2015-2067] (January 12, 2017), the Federal Circuit affirmed judgment of inducement of infringement of U.S. Patent No. 7,772,209, and that the the asserted claims...more

Canadian IP law and practice in 2016: reviewing the highlights

As the calendar turns the page from 2016 to 2017, we take the opportunity to review Canadian IP law and practice highlights from the past year....more

RxIP Update - 2016 Year in Review

The following are highlights of developments in Canadian life sciences intellectual property and regulatory law in 2016, updating our 2016 mid-year highlights. 1. Substantive patent law developments - Utility and...more

ClassCo, Inc. v. Apple, Inc.: A Reminder Of Obviousness Analysis Under KSR

In ClassCo, Inc. v. Apple, Inc. the Federal Circuit upheld a decision from the Patent Trial and Appeal Board (“the Board”), which invalidated several claims of ClassCo’s US Patent No. 6,970,695 (“the ’695 patent”) that...more

PTAB Maintains Obviousness Position after Remand

Addressing obviousness issues, including commercial success, the Patent Trial and Appeal Board (PTAB or Board) maintained its previous decision invalidating the claims of a patent related to coaxial cable connectors after the...more

In re Van Os (Fed. Cir. 2017)

"Intuitive" to Combine Insufficient to Support Obviousness Rejection - The Federal Circuit recently issued a decision in an appeal from the U.S. Patent and Trademark Office Patent Trial and Appeal Board in a case...more

Enfish, Microsoft Receive Mixed Results on PTAB Rulings

Addressing issues of claim construction and obviousness, the US Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB’s or Board’s) constructions and invalidity rulings, clearing the way...more

Keeping Your Application Aloft: Fighting Obviousness Rejections at the Patent Office

While the likelihood of a mass post-election American migration to Canada seems less likely, trying to move to the northernmost regions of Canada can be difficult. Canada may be a land of friendly locals and breathtaking...more

IPR Estoppel Narrowed Even Further in D. Delaware Ruling

Despite the astounding success for patent challengers to date in IPR proceedings, are you one who has been worried about the effects of the IPR estoppel in future litigation? Has this concern dissuaded you from considering...more

Challenges in Amending Claims in an IPR: The Evolving Burden on a Patent Owner

Amending claims during an inter partes review (IPR) proceeding is not like amending claims during ex parte prosecution or a reexamination procedure. Generally, the patent owner has only one chance to propose substitute...more

News from Abroad: Antibodies in the European Patent Office

The European Patent Office (EPO) continues to grant many patents relating to antibodies, and in doing so applies the same patentability criteria as to other inventions. However, some commentators have suggested that...more

PTAB Reversed on Issue of Diligent Reduction to Practice

Perfect Surgical Techniques (PST), Inc. owns US 6,030,384 (‘384). Olympus petitioned for Inter Partes review of ‘384 as anticipated or obvious over JP H10-33551 (JP ‘551). JP ‘551 published less than one year before the...more

PTAB Obviousness Decision Must Provide “Reasoned Explanation” For Motivation To Combine References

In a recent pair of decisions, the Federal Circuit has tightened the procedural and substantive requirements for Board decisions on obviousness. In Nuvasive, the Federal Circuit vacated a PTAB final decision that challenged...more

District Court Orders Modification of Protective Order to Allow Plaintiff to Use Defendant's Confidential Information in Opposing...

Defendant Baker Hughes Incorporated ("Baker Hughes") filed five inter partes review ("IPR") proceedings before the Patent Trial and Appeal Board ("PTAB") asserting that the plaintiff Lubrizol's patents were invalid because of...more

If the PTAB Doesn’t Say Why the Invention is Obvious, the Federal Circuit Has Nothing to Affirm

In re Nuvasive, Inc., [2015-1670] (December 7, 2016), the Federal Circuit vacated and remanded the PTAB Decision finding claims of U.S. Patent No. 8,361,156 invalid for obviousness. The Federal Circuit found that Nuvasive...more

In re NuVasive, Inc. – Explain Yourself!

Since KSR, 127 S.Ct. 1727 (2007), repudiated as “rigid and mandatory” the Federal Circuit “rule” for obviousness – that the prior art must provide a teaching, suggestion or motivation (TSM) to combine references so as to...more

In re Nuvasive (Fed. Cir. 2016)

In a precedential decision the Federal Circuit vacated and remanded a Patent Trial and Appeal Board decision invalidating claims from Nuvasive's U.S. Patent No. 8,361,156 in an inter partes review instituted on a petition by...more

Celltrion and Hospira Have Launched Inflectra® in U.S.

This past April, the FDA approved Inflectra® (infliximab-dyyb), Celltrion and Hospira’s biosimilar of Janssen’s Remicade®. According to papers filed in the Federal Circuit this week, Celltrion and Hospira (collectively,...more

Celgene Fights Back Against PTAB’s Determination of Unpatentability of Cancer-Related Patent Claims

On November 25, 2016, patent owner Celgene Corporation (“Celgene”) filed a Request for Rehearing in response to the Patent Trial and Appeal Board’s (PTAB) final written decision rendering unpatentable claims to U.S. Patent...more

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

Rx IP Update - November 2016

Federal Court of Appeal opines on the framework for analyzing obviousness-type double-patenting - On November 4, 2016, the Federal Court of Appeal dismissed Apotex’s appeal in Apotex Inc v Eli Lilly Canada Inc, 2016 FCA...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

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