Obviousness United States Patent and Trademark Office

News & Analysis as of

The Federal Circuit Considers a New Issue on Appeal, Lectures the PTO on its Burden to Establish Obviousness, and Reveals an...

The Federal Circuit in Icon Health & Fitness, Inc. v. Strava, Inc., Appeal No. 2016-1475 (Feb. 27, 2017), made several interesting points and revealed a disagreement among four of its judges about the proper disposition when...more

USPTO Standards of Review for Inter Partes Review Proceedings

The Administrative Procedures Act (APA) applies to Patent Trial & Appeal Board (PTAB) proceedings, and the Court of Appeals for the Federal Circuit (CAFC) is using the APA to check the PTAB’s tendency to invalidate claims....more

USPTO Errs in Failing to Carry Burden to Support Rejection

Failure of the U.S. Patent & Trademark Office (USPTO) to respond to patentee arguments in more than a conclusory manner constitutes reversible error. Where one party has the burden to establish a particular fact, the Federal...more

Personal Web Technologies, LLC v. Apple, Inc. (Fed. Cir. 2017)

Apple filed a successful petition for Inter Partes Review (IPR) of Personal Web Technologies' U.S. Patent No. 7,802,310. In its final written decision, the Patent Trial and Appeal Board (PTAB) agreed with Apple's contention...more

PTAB Provides A Possible Roadmap For Patent Owners To Successfully Argue Secondary Considerations Of Nonobvious

For just the third time ever, the Patent Trial and Appeals Board (“PTAB” or the “Board”) recently sided with a Patent Owner in an inter partes review (“IPR”) to find that evidence of secondary considerations of...more

In re Schweickert (Fed. Cir. 2017)

USPTO's Conclusion of Obviousness Rendered Primary Reference Unsatisfactory for Intended Purpose - In a nonprecedential opinion, the Federal Circuit vacated a decision by the Board and remanded the case on appeal from...more

In re Van Os (Fed. Cir. 2017)

"Intuitive" to Combine Insufficient to Support Obviousness Rejection - The Federal Circuit recently issued a decision in an appeal from the U.S. Patent and Trademark Office Patent Trial and Appeal Board in a case...more

Keeping Your Application Aloft: Fighting Obviousness Rejections at the Patent Office

While the likelihood of a mass post-election American migration to Canada seems less likely, trying to move to the northernmost regions of Canada can be difficult. Canada may be a land of friendly locals and breathtaking...more

PTAB Obviousness Decision Must Provide “Reasoned Explanation” For Motivation To Combine References

In a recent pair of decisions, the Federal Circuit has tightened the procedural and substantive requirements for Board decisions on obviousness. In Nuvasive, the Federal Circuit vacated a PTAB final decision that challenged...more

Celltrion and Hospira Have Launched Inflectra® in U.S.

This past April, the FDA approved Inflectra® (infliximab-dyyb), Celltrion and Hospira’s biosimilar of Janssen’s Remicade®. According to papers filed in the Federal Circuit this week, Celltrion and Hospira (collectively,...more

Purported Public Interest Group Challenges Drug Patent in Qui Tam Action

The intersection of patent law, drug regulations, creative lawyering, and commerce (if not outright greed) has once again arisen in a qui tam suit brought under 31 U.S.C. §§ 3729–3733 (alleging fraud against the U.S....more

Federal Circuit Rules the Patent Trial and Appeal Board Can Consider New Evidence During AIA Review Trial

On September 26, 2016, the U.S. Court of Appeals for the Federal Circuit declined to review in a unanimous en banc decision a panel Federal Circuit decision affirming that the Patent Trial and Appeal Board (the “Board”) at...more

Generalized Common Sense Allegations Cannot Be Used to Supply Important Missing Claim Limitation

Addressing the use of common sense for an obviousness analysis, the US Court of Appeals for the Federal Circuit held that conclusory statements about common sense cannot be used to supply missing claim limitations that play a...more

Federal Circuit: Go whole-hog on validity below if you want to contest an independent determination of invalidity on appeal

Think you’ve won on validity at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) and your claims are safe on appeal? “Not so fast,” says the Federal Circuit in Software Rights Archive, LLC v....more

Federal Circuit Rebukes PTAB for Shifting Burden of Proof to Patentee in IPR

Reaffirming the petitioner’s burden of proof codified in 35 USC § 316(e), the US Court of Appeals for the Federal Circuit reversed the decision of the Patent Trial and Appeal Board (PTAB or Board) finding the patent owner’s...more

In re Magnum Oil Tools Int'l, Ltd. (Fed. Cir. 2016)

McClinton Energy Group filed an inter partes review (IPR) petition against all claims of U.S. Patent No. 8,079,413, owned by Magnum Oil Tools International, Ltd. The USPTO's Patent Trial and Appeal Board (PTAB) instituted...more

Federal Circuit Provides Ammunition to Patentees In Magnum Decision

Patent Owners gained a bit of a reprieve in the Federal Circuit’s recent decision in In Re Magnum Oil Tool Int’l, Ltd., decided on July 25, 2016. In several key respects, Patent Owners regained some footing in the otherwise...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

Federal Circuit Explains Burden Shifting in IPRs

In re Magnum Oil Tools International, Ltd., __ F.3d __ (Fed. Cir. July 25, 2016) (Newman, O’MALLEY, Chen) (PTAB) (4 of 5 stars) The highly truncated nature of inter partes review (IPR) proceedings has led to concerns...more

PTAB Institution Decision Does Not Shift Burden from the Patent Challenger to the Patentee

The Federal Circuit previously clarified that a petitioner’s burden to prove unpatentability never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc. On July 25, 2016, the Federal Circuit’s In re...more

PTO Cannot Raise & Decide Unpatentability Theories Never Presented by the Petitioner

In In re Magnum Tools International, Ltd., [2015-1300] (July 25, 2016) the Federal Circuit reversed the PTAB’s determination that the challenged claims U.S. Patent No. 8,079,413 were invalid for obviousness. The Federal...more

Federal Circuit Patent Updates - July 2016 #2

WBIP, LLC v. Kohler Co. (No. 2015-1038, -1044, 7/19/16) (Moore, O'Malley, Chen) - Moore, J. Affirming denial of JMOL that patent was invalid as obvious and lacked an adequate written description, affirming finding of...more

Federal Circuit Offers Path Through Section 101 Thicket for Biotech Method Patents

In its July 5, 2016 decision in Rapid Litigation Management Ltd and In Vitro, Inc. v. CellzDirect, Inc. and Invitrogen Corp., the Federal Circuit held that patent claims directed to an improved method of cryopreserving...more

Re-Exam Claiming Opposite Enantiomer Not Enough to Invalidate Patent (Cubist Pharmaceuticals, Inc. v. Hospira, Inc., (Fed. Cir....

The U.S. Court of Appeals for the Federal Circuit affirmed the judgment of the district court regarding the five asserted patents. Cubist Pharmaceuticals, Inc. v. Hospira, Inc., 805 F.3d 1112, 1115 (Fed. Cir. 2015)....more

Federal Circuit Review | February 2016

Federal Circuit Dismisses an Appeal of an Inter Partes Reexamination for Lack of Standing Where the Appellant Failed to Establish that it was the Successor-in-Interest to the Original Petitioner - In Agilent...more

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