Obviousness Prior Art

News & Analysis as of

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

Federal Circuit Patent Updates - August 2016

ScriptPro LLC v. Innovation Associates, Inc. (No. 2015-1565, 8/15/16) (Moore, Taranto, Hughes) - August 15, 2016 10:41 AM - Moore, J. Reversing summary judgment of invalidity of claims for lack of written...more

Federal Circuit Provides Guidance on Use of Common Sense in Obviousness Analysis

Last week, in Arendi S.A.R.L. v. Apple, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of invalidity in an inter partes review that relied on “common sense” to supply a claim limitation that was...more

PTAB Reversed–Common Sense Improperly Used to Supply Missing Limitation in Obviousness Inquiry

In a rare rebuke of the PTAB’s discretion, the Federal Circuit has outright reversed a finding of obviousness based on the Board’s misapplication of the law on the permissible use of “common sense” in an obviousness analysis....more

Magnum Offers New Path for Challenging AIA Decisions: Burden of Production

On July 25, 2016, the Court of Appeals for the Federal Circuit (CAFC) held in In re Magnum Oil Tools International (Newman, O’Malley & Chen) that the burden of production to show unobviousness does not shift to a patent owner...more

HP Inc. v. Big Baboon, Inc. (PTAB 2016) - Business Method Patent Not Invalid under 35 U.S.C. § 101

HP Inc. and SAP America, Inc. filed a Petition seeking a covered business method (CBM) patent review of claims 15 and 20–34 of U.S. Patent No. 6,343,275 owned by Big Baboon, Inc. The PTAB, however, determined that the...more

No Approval for Generic Product for Treatment of Rosacea **WEB ONLY**

Addressing infringement under the doctrine of equivalents and obviousness issues, the US Court of Appeals for the Federal Circuit affirmed the district court’s ruling barring approval of a generic version of Finacea® gel...more

Federal Circuit Distinguishes “Motivation to Combine” from “Expectation of Success” for Obviousness Purposes

Addressing issues of obviousness and the proper scope of inter partes review (IPR) reply briefs, the US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB or Board) IPR decision finding the...more

Federal Circuit Review | June 2016

The PTAB Does Not Have to Consider New Arguments Raised in IPR Reply Briefs - In Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Appeal No. 2015-1693, the Federal Circuit upheld a PTAB decision finding of...more

A Combination of References Can be Obvious Even if it Requires a Bit of Work

In Allied Erecting v. Genesis Attachments, LLC, [2015-1533] (June 15, 2016), the Federal Circuit affirmed the PTAB’s decision in IPR2014-001006 that claims 1–21 of U.S. Patent No. 7,121,489, were obvious. Allied first...more

Board Not Limited to Prior Art in the Grounds, as Long as Patent Owner Had Notice

In Genzyme Therapeutic Products Limited v. Biomarin Pharmaceutical, Inc., [2015-1720, 2015-1721](June 14, 2016), the Federal Circuit affirmed the PTAB’s decisions in IPR2013-00534 and IPR2013-00537 that certain claims of ...more

The Introduction of New Evidence Is Permitted During IPR Proceedings

On June 14, 2016, the Federal Circuit issued an opinion clarifying that the introduction of new evidence is not only permitted, but “is to be expected,” in inter partes review proceedings. As long as the opposing party is...more

Federal Circuit Affirms PTAB’s Decision Invalidating Genzyme Patents

On June 14, 2016, the Federal Circuit issued a final decision in Genzyme Therapeutic Prods. v. Biomarin Pharms., No. 2015-1720 case affirming two PTAB IPR final decisions invalidating as obvious the claims of U.S. Patent Nos....more

PTAB Reversed for Failing to Explain “Why” a Person of Skill Would Modify the Prior Art

It is no secret that patent owners have, on average, struggled at the PTAB over the last three and a half years. Some practitioners say that a reason for this result is that the Board many times takes an aggressive approach...more

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. (Fed. Cir. 2016)

Have you ever mixed up the obviousness determinations of "motivation to combine" and "reasonable expectation of success"? If so, you are apparently not alone -- the Federal Circuit recently faulted the Patent Trial and...more

PTAB Institutes IPR on Humira Patent

As we previously reported, the PTAB instituted IPR on U.S. Patent 8,889,135, which is drawn to a method of treating rheumatoid arthritis (“RA”) with Humira®, a TNFa-inhibitor. Claim 1 is directed to “A method for treating...more

Federal Circuit Affirms Exclusion of IPR Reply that Raised New Grounds of Invalidity

In Intelligent Bio-Systems, Inc., v, Illumina Cambridge Ltd., [2015-1693] (May 9, 2016), the Federal Circuit affirmed the PTAB’s Final Written decision that the challenged claims of U.S. Patent No. 7,566,537, directed to a...more

TriVascular, Inc. v. Samuels (Fed. Cir. 2016)

Early last month, the Federal Circuit addressed an important question regarding the interplay between a decision to institute inter partes review before the Patent Trial and Appeal Board and the ultimate determination by the...more

Purdue Pharma L.P. v. Depomed, Inc. (Fed. Cir. 2016)

Last Thursday, the Federal Circuit handed down its non-precedential decision in Purdue Pharma v. Depomed, reviewing the decision of the Patent Trial and Appeal Board on three related inter partes reviews. While not quite a...more

Sometimes the Application of a New Technology is Obvious from the New Technology itself

In In re Cree, [2015-1365] (March 21, 2016), the Federal Circuit affirmed the decision of the PTAB in an ex parte reexamination that the claims directed to the production of white light through the “down-conversion” of blue...more

Federal Circuit Review | March 2016

Under O2 Micro, a District Court Must Provide a Claim Construction if the Parties Dispute the Meaning of a Claim Term - In Eon Corp. IP Holdings LLC v. Silver Springs Networks, Inc., Appeal No. 2015-1237, the Federal...more

IP Newsflash - March 2016

DISTRICT COURT CASES - New York Court Invalidates Targeted-Advertising Patents under Alice - A federal judge in the Southern District of New York granted counterclaim-defendant TNS’s motion for summary judgment...more

PTAB Denies Lupin’s IPR in Win for Pozen – Claimed Tablet That Provided Coordinated Drug Release Not Suggested by Prior Art, Which...

The Patent Trial and Appeal Board recently denied institution of a Lupin inter partes review against a Pozen patent covering VIMOVO® (naproxen/esomeprazole magnesium delayed-release tablets, commercially sold by Horizon...more

Method of Treatment Claims Cancelled in View of Prior Art under Theory of Obviousness, but Not Anticipation - Eli Lilly and Co. v....

In an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (Board) found all of Los Angeles Biomedical Research Institute’s (LA-Bio Med) patent claims unpatentable on the basis of obviousness in view of a...more

Expected Toxicity of Claimed Immunoconjugates Thwarts Showing of Prima Facie Obviousness (Phigenix, Inc. v. Immunogen, Inc.,...

In an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (Board) upheld the patentability of Phigenix’s patent claims that were challenged on the basis of obviousness. Phigenix, Inc. v. Immunogen, Inc.,...more

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