News & Analysis as of

Recent IPR Guidance From a Trio of Forums

As inter partes review (IPR) practice continues to develop and practitioners feel their way around the edges, the last month brought helpful guidance from a trio of forums: the Federal Circuit, the Central District of...more

Teaching Away Arguments Fail to Gain Traction with PTAB

A favored, but largely unsuccessful, line of defense for Patent Owners in inter partes review proceedings is the argument that the prior art references-at-issue teach away from their combination. A typical form of this...more

Combinations of Predictable Elements from the Prior Art Need Not Be Advantageous - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.

Addressing the propriety of combining prior art in an obviousness analysis, U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (“PTAB” or “Board”) determined that a patent for a spinal implant for...more

Pharmaceutical Patent Score a Win - Amneal Pharms., LLC v. Supernus Pharms., Inc.

In three separate but related final written decisions in the first successful defense of a pharmaceutical patent in an inter partes review (IPR), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board...more

District Court Action Dismissed Without Prejudice Does Not Bar Filing of IPR Petition - Nautique Boat Co., Inc. v. Malibu Boats,...

Addressing whether a district court action dismissed without prejudice bars a filing of an inter partes review (IPR) petition under 35 U.S.C. § 315(a)(1), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal...more

Obviousness Post KSR

On April 30, 2007 in KSR v Teleflex, the Supreme Court reaffirmed its view expressed many years ago that patents should not be granted for inventions that had too low a level of inventivity. As Justice Kennedy in a unanimous...more

Prior Art Reference Does Not “Teach Away” if It Fails to Criticize, Disclaim or Discourage the Claimed Technique

Ultratec, Inc. v. CaptionCall, L.L.C. - Addressing the obviousness issue whether an asserted secondary reference impermissibly changes the principle of operation of a primary reference, the U.S. Patent and Trademark...more

Federal Circuit Says Secret Prior Art Is Prior Art for All Purposes

In Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc., the Federal Circuit agreed with the district court that Ethicon’s prototype constituted prior art under 35 USC § 102(g) based on its earlier date of conception, but...more

Patent Ever-Greening: Not So Obvious

Although the Federal Circuit recently affirmed a district court’s decision on patent invalidity based on obviousness-type double patenting, the case provides an impetus to review terminal disclaimer practice within a patent...more

Patentee May Cancel but May Not Substitute Claims when Proposed Amended Claims Are Not Shown To Be Unobvious

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. - Addressing the burden of establishing the patentability of claim amendments in inter partes review (IPR), the U.S. Patent and Trademark Office Patent Trial and...more

PTAB Update -- Amending Claims in an IPR Proceedings

Just what does it take to amend your claims during an IPR proceeding before the PTAB? Of course, the America Invents Act ("AIA") specifically provides that Patent Owners may file one motion to amend the claims. AIA, §...more

Federal Circuit Notes High Burden of Invoking Inherency for Obviousness

In Par Pharmaceutical Inc. v. Twi Pharmaceuticals, Inc., the Federal Circuit vacated and remanded the district court decision holding the Par claims at issue obvious. The district court decision rested in part on the doctrine...more

Seeing Beyond the Doggie Wear: What MCR Innovations Teaches about the Obviousness of Design Patents in the Garment Industry

In the United States, patent protection can be afforded to aesthetic innovation (design patents), and functional innovation (utility patents). Because binding precedent relating to design patents is relatively sparse,...more

“Soda-Pop” Bottle Caps Can Be Analogous Art for Flash Chromatography Cartridges

Scientific Plastic Products, Inc. v. Biotage AB - Addressing the issue of analogous art in the context of inter partes reexamination, the U.S. Court of Appeals for the Federal Circuit affirmed a decision of the U.S....more

PTAB on Analogous Art

Schott Gemtron Corp. v. SSW Holding Co., Inc. - In a final written decision addressing the patentability of claims challenged as obvious, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB, the...more

PTAB Disqualifies Art as Being Non-Analogous to Claimed Invention

A limited number of cases, to date, have dealt with the issue of analogous prior art in an obviousness analysis. In Schott Gemtron Corp. v. SSW Holding Co., IPR2014-00358, the Board addressed this type of issue, finding in...more

Examiner and Board Must Be Consistent in Prior Art-Based Rejections of Similarly-Worded Claims

Q.I. Press Controls, B.V. v. Lee - Addressing the issue of whether the U.S. Patent and Trademark Office’s (PTO) Board of Patent Appeals and Interferences (the Board) erred by rejecting some claims as obvious, but not...more

A Compound Is Obvious Where Only Minor Changes to a Prior Art “Lead Compound” Are Required to Make the Claimed Compound

Bristol-Myers Squibb Co. v. Teva Pharms USA, Inc. - Addressing the obviousness of a claimed compound where a person of skill would need to make only minor changes to a lead compound to arrive at the claimed invention,...more

Allergan, Inc. v. Apotex, Inc. (Fed. Cir.)

Case Name: Allergan, Inc. v. Apotex, Inc., No. 2013-1245, -1246, -1247, 2014 U.S. App. LEXIS 10710 (Fed. Cir. June 10, 2014) (Circuit Judges Prost, Reyna and Chen presiding; Opinion by Prost, C.J.; Dissent-in-part by Chen,...more

Testimony of Expert Witness: Key Patentability Arguments in Inter Partes Review

SATA GmbH & Co. KG v. Anest Iwata Corp. - In a final written decision, in an inter partes review (IPR), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) rejected a patent owner’s motion to...more

Expert's Failure to Properly Apply Obviousness Standard Leads to Vacated Jury Verdict

InTouch Techs., Inc. v. VGo Communications, Inc. - Addressing the sufficiency of expert testimony to support a jury’s finding of obviousness, the U.S. Court of Appeals for the Federal Circuit reversed the district...more

Design Patent Case Digest: Munchkin, Inc. and Toys “R” US, Inc. v. Luv N’ Care, LTD.

Decision Date: April 21, 2014 - Court: Patent Trial and Appeal Board - Patents: D617,465 - Holding: Claimed design is obvious and therefore UNPATENTABLE - Opinion: Petitioners Munchkin, Inc. and Toys...more

Keeping Score at the PTAB

Motorola v. Mobile Scanning; Adidas v. Nike; Berk-Tek v. Belden; Munchkin, Inc. v. Luv N' Care, Ltd. - In the final written decisions of five inter partes reviews (IPRs) the Patent Trial and Appeal Board (PTAB)...more

Pre-AIA Statute Did Not Give Patent Owner in an Ex Parte Reexamination the Right to Bring an Action in District Court

In re Teles AG Informationstechnologien - Addressing whether a patent owner involved in a pre-America Invents Act (AIA) ex parte reexamination, could challenge an adverse reexamination decision in a district court...more

Combining Two Drugs Is Not Always Obvious

Sanofi-Aventis Deutschland GMBH v. Glenmark Pharmaceuticals Inc. - Addressing the obviousness of combining two known hypertension medications, the U.S. Court of Appeals for the Federal Circuit upheld a ruling of...more

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