News & Analysis as of

Obviousness Patents

CAFC Finds Harmless Error in USPTO Reliance On Doctrine of Inherency

by Foley & Lardner LLP on

In Southwire Co. v. Cerro Wire LLC, the Federal Circuit upheld the USPTO decision rendered in an inter partes reexamination proceeding that found Southwire’s patent invalid as obvious. Although the court found that the USPTO...more

When Your Background Dooms The Invention

37 CFR 1.77(b)(7) suggests that a patent application should include a “Background of the Invention.” The Background of the Invention, however, can cause trouble if the drafter is not careful....more

Federal Circuit Review - August 2017

by Knobbe Martens on

District Court Abused Discretion in Ignoring Federal Circuit Mandate to Reconsider Attorneys’ Fees Under Octane Fitness - In Adjustacam, LLC v. Newegg, Inc., Appeal No. 2016-1882, the Federal Circuit held that a district...more

Objective Indicia Were Properly Considered and Did Not Save Cookie Package Patent from Summary Judgment of Obviousness

In Intercontinental Great Brands LLC v. Kellogg North American Co., [2015-2082, 2015-2084] (September 7, 2017), the Federal Circuit affirmed summary judgment that Kraft’s U.S. Patent No. 6,918,532 was invalid for obviousness,...more

Mere Quantification of the Results of a Known Process is Not Patentable

In Southwire Co. v. Cerro Wire LLC, [2016-2287] (September 8, 2017), the Federal Circuit affirmed the PTAB’s decision in an Inter Partes reexamination that the claims of U.S. Patent No. 7,557,301 on a method of making cable...more

Secondary Considerations Win Again

by Jones Day on

As we have previously discussed (on February 1, March 1, March 30, and May 19), reliance on secondary considerations of non-obviousness has been hit or miss for patent owners trying to convince PTAB panels that the secondary...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Intercontinental v. Kellogg involves a fight between two food industry powerhouses, Kraft and Kellogg, in which a majority of the panel affirms summary judgment of obviousness of a patent directed to a resealable cookie...more

CAFC Vacates USPTO Single Reference Obviousness Rejection For Inadequate Showing Of Expectation of Success

by Foley & Lardner LLP on

In a split decision with Judge Lourie dissenting, the Federal Circuit vacated an obviousness rejection that had been affirmed in an ex parte appeal to the USPTO Patent Trial and Appeal Board. The decision was rendered in In...more

Federal Circuit Cultivates Criteria for Obviousness Rejection: Rational Underpinning and Articulation Required to Establish...

The Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s (PTAB) decision in In re Stepan Co., No. 2016-1811 (Fed. Cir. Aug. 25, 2017), because the PTAB “failed to adequately articulate its reasoning,...more

Judge Sleet Invalidates Patents-In-Suit After Finding Of Obviousness And Enters Judgment In Favor Of Alleged Infringer In...

by Fox Rothschild LLP on

Following a five-day bench trial in the matter in February 2017 and after having considered the entire record in the case and the applicable law, the Court, through Memorandum, entered by The Honorable Gregory M. Sleet in...more

Not Every Instance of an Agency Reaching Inconsistent Outcomes in Similar, Related Cases will Necessarily be Erroneous

In Vicor Corp. v. Synqor, Inc., [2016-2283] (August 30, 2017) the Federal Circuit affirmed in part, vacated in part, and remanded the Board’s decisions in two reexaminations, one in which the Board found that certain claims...more

Mylan Pharm. v. AstraZeneca AB (PTAB 2017)

The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office recently issued a Final Written Decision in an inter partes review styled Mylan Pharm. v. AstraZeneca AB affirming the patentability of all challenged...more

Recent Design Decisions Provide Insight for Design Patent Prosecution

Three recent decisions relating to design patents provide useful insights into design patent prosecution. First, the PTAB recently instituted two IPR petitions directed to design patents, bringing the total number of...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Today the Circuit agreed to hear en banc Nantkwest v. Matal,in which the panel had reversed a district court decision that had rejected the PTO’s position that applicants who appeal a district court must pay the PTO’s legal...more

Federal Circuit Rules in Favor of Public Interest Group Standing at PTAB

by Jones Day on

In Personal Audio, LLC. v. Electronic Frontier Foundation, No. 2016-1123 (Fed. Cir. Aug. 7, 2017), the Federal Circuit reviewed a Patent Trial and Appeal Board (“PTAB”) decision invalidating claims of U.S. Patent No....more

Obviousness Requires Articulation; Routine Optimization Insufficient Alone

In Re Stepan Company , No. 2016-1811 (Fed. Cir. Aug. 25, 2017) - The Federal Circuit vacated a Patent Trial and Appeal Board’s obviousness decision for failing to adequately articulate its reasoning. The Stepan Company...more

Concerns Raised Regarding PTAB Rules on Joinder and Expanded Panels

In Nidec Motor Co. v. Zhongshan Broad Ocean Motor Co., No. 16-2321 (Fed. Cir. Aug. 22, 2017), the Federal Circuit affirmed the PTAB’s decision that claims directed to a low-noise HVAC system were invalid as obvious. Broad...more

Audatex North America, Inc. v. Mitchell International, Inc. (Fed. Cir. 2017)

On July 27, 2017, the Federal Circuit issued an opinion in Audatex North America, Inc. v. Mitchell International, Inc., upholding the U.S. Patent and Trademark Office Patent Trial and Appeal Board's (PTAB) decision in which...more

Disclosed Structure Restricts Breadth of Means-Plus-Function Limitations

by McDermott Will & Emery on

In an opinion addressing claim construction and Patent Trial and Appeal Board (PTAB) jurisdiction, the US Court of Appeals for the Federal Circuit concluded that while the PTAB had the authority to consider the patentability...more

Routine Optimization Cannot Make Invention Obvious Without A Reasonable Expectation for Success

In In re Stepan Co., [2016-1811] (August 25, 2017), the Federal Circuit vacated the Patent Trial and Appeal Board’s affirmance of the Examiner’s rejection of claims 1–31 of U.S. Patent Application No. 12/456,567 on herbicidal...more

Federal Circuit Concurring Opinion Asks Whether the Exception To One-Year Time Bar For Filing Inter Partes Review Petitions Via...

by Brinks Gilson & Lione on

In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., No. 2016-2321 (Fed. Cir. Aug. 22, 2017), a concurring opinion by Judges Dyk and Wallach questioned whether petitioners may use joinder to circumvent time bar...more

Obviousness Reversed for Clear Error in Factual Findings on Combination of References

by McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed a district court’s judgment that the challenged claims were invalid for obviousness. The Court also vacated judgments in separate actions that had been entered based on...more

Janssen v. Celltrion: CAFC & District Court Litigation Update

by Goodwin on

As we previously reported last year, in the ongoing Janssen v. Celltrion litigation concerning Celltrion’s Inflectra®, a biosimilar of Janssen’s Remicade® (infliximab), Janssen appealed the district court’s partial final...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In Nidec v. Zhongshan, the entire panel affirms a determination of obviousness but two judges question whether § 315(c) of the AIA was improperly used to permit joinder as to a second Zhongshan petition filed after the...more

Expanded PTO Panels and Improper Joinder: The Federal Circuit Fires a Warning Shot

by Jones Day on

The Federal Circuit’s decision in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., (Fed. Cir. No. 16-2321), expresses a growing discomfort with the Patent Office’s practice of joinder and expanded panels....more

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