News & Analysis as of

Obviousness Prior Art

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

In In Re Cray, the panel grants Cray’s petition for a writ of mandamus, ruling that the district court’s handling of the case is not consistent with its case law regarding what is “a regular and established place of...more

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

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

Federal Circuit Review - July 2017

by Knobbe Martens on

District Court Abused Discretion in Not Finding Case Exceptional - In Rothschild Connected Devices v. Guardian Protection Services, Appeal No. 2016-2521, the Federal Circuit held that a district court abused its discretion...more

Federal Circuit upholds Millennium’s Patent on Velcade®

by Knobbe Martens on

MILLENNIUM PHARMACEUTICALS, INC. v. SANDOZ INC - (Fed. Cir. July 17, 2017) (NEWMAN, Mayer, O’Malley) - This case arose out of an ANDA litigation between Millennium and a number of generic-drug companies who sought FDA...more

Fairness in Evaluation: Federal Circuit Remand to Board For Failure to Fully Consider Petitioner’s Arguments Against Motion to...

by Foley & Lardner LLP on

In Shinn Fu Company of America, Inc. et al. v. The Tire Hanger Corp., slip op. 2016-2250 (Fed. Cir. July 3, 1997) (non-precedential), the Federal Circuit reversed a Board’s decision granting a motion to amend claims...more

PTAB Grants Contingent Motion to Amend on Remand from Federal Circuit

On July 17, 2017, the Patent and Trial Appeal Board (the “Board”) granted in-part, Patent Owner’s conditional motion to amend on remand from an appeal to the Federal Circuit. In a final written decision issued in April 2015,...more

Federal Circuit Thoroughly Reverses District Court Findings of Velcade® Patent Obviousness

On July 17, 2017, the United States Court of Appeals for the Federal Circuit reversed, in a precedential opinion in Millennium Pharmaceuticals, Inc. v. Sandoz, Inc., No. 2015-2066 (Fed. Cir. July 17, 2017), a district court...more

UK Supreme Court broadens scope of patent protection

by Dechert LLP on

The UK Supreme Court’s recent judgment in Actavis v Eli Lilly sets out a revised approach to assessing the scope of protection of patents. The new approach is likely to confer greater protection on patent owners, by providing...more

Unexpected Results of an Obvious Process are Non-obvious

In Millennium Pharmaceuticals, Inc., v. Sandoz Inc., [2015-2066, 2016-1008, 2016-1009, 2016-1010, 2016-1109, 2016-1110, 2016-1283, 2016-1762] (July 17, 2017), the Federal Circuit reversed the district court, finding that...more

Federal Circuit Patent Updates - July 2017

by WilmerHale on

Millennium Pharmaceuticals v. Sandoz Inc. (No. 2015-2006, 7/17/17) (Newman, Mayer, O'Malley) - Newman, J.Reversing and vacating judgments of invalidity for obviousness in consolidated appeals. ...more

Securus Technologies, Inc. v. Global Tel*Link Corp. (Fed. Cir. 2017)

Over the last 18 months, the Federal Circuit has been quietly shoring up the non-obviousness provisions of 35 U.S.C. § 103 by enforcing the requirement that an obviousness argument entails making the full prima facie case. ...more

Method-of-Treatment Claims That Did Not Require a Specific Level of Efficacy Held Unpatentable as Obvious in Light Of References...

The Patent Trial and Appeal Board (the “Board”) issued a final written decision in an inter partes review determining Claims 1-5 of U.S. Patent No. 8,889,135 owned by Abbvie Biotechnology Ltd. unpatentable as obvious...more

PTAB Issues Additional Final Written Decisions Finding AbbVie’s Humira Patent Unpatentable

by Goodwin on

On July 6, 2017, the PTAB issued two additional Final Written Decisions finding AbbVie’s U.S. Patent 8,889,135 (“the ‘135 patent”) unpatentable as obvious over the prior art. The Final Written Decisions were issued in...more

Prism Technologies LLC v. T-Mobile USA, Inc. (Fed. Cir. 2017)

An Obviousness Rejection in Patent-Eligibility Clothing? - In Mayo v. Prometheus, the Supreme Court wrote "[w]e recognize that, in evaluating the significance of additional steps, the § 101 patent-eligibility inquiry and,...more

“Catch-All” Phrases Insufficient To Give Proper Notice of Grounds for Petition

In Emerachem Holdings, LLC v. Volkswagen Group of America, Inc., the Federal Circuit made clear that “catch-all” phrases in a Petition for IPR and/or a Board’s Institution Decision are insufficient to put a patent owner on...more

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

In EmeraChem v Volkswagen the Circuit reverses a determination of obviousness because the ?Board did not provide the patentee with an adequate opportunity to address a prior art reference ?that formed a principal basis for...more

Kyle Bass Ends with a Bang: Success in Final PTAB Decision

by Fish & Richardson on

On June 7, 2017, Kyle Bass received his last final written decision in a long list of PTAB decisions rendered over the past two years as Kyle Bass sought to invalidate pharma patents. U.S. Patent No. 8,476,010 (the “’010...more

The Board can Rely on a Party’s Arguments in an IPR, as Long as it Explains Why

In Outdry Technologies Corp. v. Geox S.P.A., [2016-1769] (June 16, 2017), the Federal Circuit affirmed the Board’s determination that claims 1–15 of U.S. Patent No. 6,855,171 would have been obvious over a combination of...more

General Statements in Petition and Institution Decision Did Not Give Patent Owner Fair Notice of the Grounds of Invalidity in the...

In Emerachem Holdings, LLC v. Volkswagen Group of America, Inc., [2016-1984] (June 15, 2017), the Federal Circuit affirmed the Board’s decision that claims 1–2, 4–14, and 17–19 of U.S. Patent No. 5,599,758 were obvious, and...more

Recent PTAB Decision Highlights Importance of Secondary Considerations in Obviousness Challenges

Obviousness challenges are popular post-grant challenges before the Patent Trial and Appeal Board (PTAB). Generally, under 35 U.S.C. § 103 (“§ 103”), the courts make legal and factual inquiries into (1) the scope and content...more

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