Obviousness United States Patent and Trademark Office

News & Analysis as of

Preponderance Standard Applies to Ex Parte Re-examinations - Dome Patent L.P. v. Lee

Addressing the presumption of validity in ex parte re-examinations, the U.S. Court of Appeals for the Federal Circuit reiterated that the presumption of validity does not apply to patents under reexamination in the U.S....more

Dueling Records: Are Statements in Your 510(k) Putting Your Patents at Risk?

Laboratory developed test (LDT) providers, previously exempt from U.S. Food and Drug Administration (FDA) oversight, under a new FDA proposal, must now consider if their LDTs constitute moderate-risk (Class II) or high-risk...more

Morsa II: Admissions Enable Prior Art

In its 2013 decision in In re Morsa, the Federal Circuit vacated an anticipation rejection where “both the Board and the examiner failed to engage in a proper enablement analysis” to establish the enabling quality of the...more

PTAB Institutes Kyle Bass Lialda Patent IPR

After filing over thirty petitions for Inter Partes Review of Orange Book-listed patents for various drugs, Kyle Bass and his Coalition for Affordable Drugs finally have made it over the first hurdle. The USPTO Patent Trial...more

Federal Circuit Affirms Invalidity and Non-Infringement of Patent for Compound Used to Ameliorate Effects of Cancer Treatment

On October 2, 2015, the Federal Circuit affirmed a district court’s holding (1) that a substantially pure compound would have been obvious when a lesser pure compound (“the 50/50 mixture”) and the pure compound were known in...more

In re Steed (Fed. Cir. 2015) - Swearing Behind Reference Still Requires Proof of (Timely Filed) Evidence

Thomas Steed, Sourav Bhattacharya, and Sandeep Seshadrijois (collectively "Steed") filed a patent application entitled "Web-Integrated On-Line Financial Database System and Method for Debt Recovery," on April 6, 2004, with...more

Big Pharma Seeks Exemption From Patent Law

Implementation of the America Invents Act (“AIA”) has brought substantial changes to the patent law of the United States over the last several years. One of the most significant provisions of the AIA was the creation of inter...more

Board Boots Bass Tecfidera IPR on the Merits

On September 2, 2015, the USPTO Patent Trial and Appeal Board (PTAB) denied institution of another Inter Partes Review brought by Kyle Bass, the Coalition for Affordable Drugs, and other related entities. In denying the...more

Summary of PTO’s Proposed Rules Changes for AIA Proceedings

The America Invents Act (AIA) was enacted into law on Sept. 16, 2011, and the U.S. Patent and Trademark Office implemented rules for governing the inter partes review, post-grant review, transitional program for covered...more

US Patent Trial and Appeal Board proposes rule changes to AIA trials

The United States Patent and Trademark Office (USPTO) recently issued its proposed changes to the rules for AIA trials, which include inter partes review (IPR), post-grant review (PGR) and the transitional program for covered...more

Keep the Petitions Concise - Apple, Inc. v. Contentguard Holdings, Inc.

Addressing the issues of voluminous petitions and obviousness, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) denied a request to institute an inter partes review (IPR), finding the...more

Mixing Things Up: Let’s Talk Recipes, Part Two of a Four-Part Series (Patent)

Discussions about protecting intellectual property often focus on cutting-edge technologies, corporate branding campaigns, and widely distributed artistic works like movies and music. But let’s mix things up a bit. Follow...more

Preparing For The Obvious At The PTAB

There is little debate that inter partes reviews have proven to be an effective means of challenging the validity of a patent. During the first two-and-a-half years, more than 73 percent of claims originally challenged in IPR...more

MBHB Snippets: Review of Developments in Intellectual Property Law: Spring 2015 - Vol. 13, Issue 2

In This Issue: - After B&B Hardware, What is the Full Scope of Estoppel Arising From a PTAB Decision in District Court Litigation? - When You Don’t Know What You Know: The Role of Unappreciated Inherency in the...more

Nearly Expired Is Not the Same as Expired: The Board Clarifies Claim Construction Standards for Inter Partes Review - Apple, Inc....

Addressing the standard to be applied for claim construction during inter partes review (IPR) proceedings, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) declined to create an...more

Federal Circuit Review | April 2015

No Recovery Of Lost Profits From Related Companies’ Activities - In WARSAW ORTHOPEDIC, INC. v. NUVASIVE, INC., Appeal Nos. 2013-1576, -1577, the Federal Circuit held that a company was not entitled to lost profits based...more

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

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

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

Federal Circuit IPR Scoreboard PTAB: 2 Patent Owner: 0

Last week the Federal Circuit issued its first decision in an appeal of a final decision from a post-issuance review proceeding under the America Invents Act. In a 2-1 decision, the Federal Circuit affirmed a Patent Trial and...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

Failure to Address All Graham Factors Dooms CBM Petition

Travelocity.com L.P. v. Cronos Technologies LLC - Addressing the showing required to institute covered business method (CBM) proceedings based on obviousness, the U.S. Patent and Trademark Office Patent Trial and...more

Patent Owner Bears Burden of Proving Proposed Claims Patentable

Harmonic, Inc. v. Avid Tech., Inc. - Addressing the patent owner’s burden of showing non-obviousness in an inter partes review (IPR), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB, or...more

Judge Crotty denies attorney and expert fees

In a matter related to Case no. 1:13–cv-01358–PAC, Abbvie requested attorney and expert fees following the court’s determination that U.S. Patent No. 7,846,442 (“Methods of treating rheumatoid arthritis with an anti-TNF-alpha...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

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