News & Analysis as of

Obviousness United States Patent and Trademark Office

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

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

CAFC Vacates USPTO Single Reference Obviousness Rejection For Inadequate Showing Of Expectation of Success

by Foley & Lardner LLP on

In a split decision with Judge Lourie dissenting, the Federal Circuit vacated an obviousness rejection that had been affirmed in an ex parte appeal to the USPTO Patent Trial and Appeal Board. The decision was rendered in In...more

Mylan Pharm. v. AstraZeneca AB (PTAB 2017)

The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office recently issued a Final Written Decision in an inter partes review styled Mylan Pharm. v. AstraZeneca AB affirming the patentability of all challenged...more

Recent Design Decisions Provide Insight for Design Patent Prosecution

Three recent decisions relating to design patents provide useful insights into design patent prosecution. First, the PTAB recently instituted two IPR petitions directed to design patents, bringing the total number of...more

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

Today the Circuit agreed to hear en banc Nantkwest v. Matal,in which the panel had reversed a district court decision that had rejected the PTO’s position that applicants who appeal a district court must pay the PTO’s legal...more

Audatex North America, Inc. v. Mitchell International, Inc. (Fed. Cir. 2017)

On July 27, 2017, the Federal Circuit issued an opinion in Audatex North America, Inc. v. Mitchell International, Inc., upholding the U.S. Patent and Trademark Office Patent Trial and Appeal Board's (PTAB) decision in which...more

Disclosed Structure Restricts Breadth of Means-Plus-Function Limitations

by McDermott Will & Emery on

In an opinion addressing claim construction and Patent Trial and Appeal Board (PTAB) jurisdiction, the US Court of Appeals for the Federal Circuit concluded that while the PTAB had the authority to consider the patentability...more

Federal Circuit Concurring Opinion Asks Whether the Exception To One-Year Time Bar For Filing Inter Partes Review Petitions Via...

by Brinks Gilson & Lione on

In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., No. 2016-2321 (Fed. Cir. Aug. 22, 2017), a concurring opinion by Judges Dyk and Wallach questioned whether petitioners may use joinder to circumvent time bar...more

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

In Nidec v. Zhongshan, the entire panel affirms a determination of obviousness but two judges question whether § 315(c) of the AIA was improperly used to permit joinder as to a second Zhongshan petition filed after the...more

Expanded PTO Panels and Improper Joinder: The Federal Circuit Fires a Warning Shot

by Jones Day on

The Federal Circuit’s decision in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., (Fed. Cir. No. 16-2321), expresses a growing discomfort with the Patent Office’s practice of joinder and expanded panels....more

Federal Circuit Signals that Issue Joinder and Expanded Panels May Not Be Long for the IPR World

A fairly straightforward Federal Circuit decision today affirming a PTAB determination of obviousness provides insight into a potential reining in of the PTAB on two issues. In Nidec Motor Corp. v. Zhongshan Broad Ocean...more

Federal Circuit Criticizes PTAB Reliance On Routine Testing

by Foley & Lardner LLP on

In Honeywell International, Inc. v. Mexichem Amanco Holdings S.A. DE C.V., the Federal Circuit vacated the decision of the USPTO Patent Trial and Appeal Board that invalidated Honeywell’s patent in an inter partes...more

Can Unexpected Results Make the Obvious Non-Obvious?

In Honeywell, Int’l Inc. v. Mexichem Amanco Holdings S.A., [16-1996] (August 1, 2017), the Federal Circuit vacated the USTPO’s reexamination decision invalidating claims 1–26, 31–37, 46–49, 58, 59, 61–68, 70–75, 80, and 81 of...more

Millennium Pharmaceuticals, Inc. v. Sandoz Inc. (Fed. Cir. 2017)

In multiple ANDA litigations against multiple defendants, Millennium Pharmaceuticals, Inc. had several of its asserted claims held invalid for obviousness at the district court. The Federal Circuit reversed these decisions...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

PTO Erred by Not Identifying Algorithm Corresponding to §112, ¶ 6 Element Before Invalidating Claims

In IPCOM GmbH & Co. v. HRC Corp., [2016-1474] (July 7, 2017) the Federal Circuit found that the Board failed to conduct a proper claim construction of the “arrangement for reactivating the link” claim limitation, and...more

Summaries of All Supreme Court and Precedential Federal Circuit Patent Cases Decided Since Jun. 1, 2016

This paper is based on reports on precedential patent cases decided by the Federal Circuit distributed by Peter Heuser on a weekly basis. Please see full publication below for more information....more

Recent Developments In Patent Law May 17, 2017

Update to TC Heartland LLC v. Kraft Foods Group Brands LLC, Case No. 16-341 (May 22, 2017) - In an 8-0 opinion written by Justice Thomas (Justice Gorsuch did not participate), the Supreme Court rules that a defendant...more

Why Design Patents Are Surviving Post-Grant Challenges

As of January 2017, the institution rate for Patent Trial and Appeal Board trials involving design patents was 37 percent. That is significantly lower than every other technology area and makes design patents the only...more

USPTO Files Response Brief in In re Janssen Biotech, Inc. & New York University

The U.S. Patent and Trademark Office has now filed its response brief in In re: Janssen Biotech, Inc., New York University, No. 2017-1257 (Fed. Cir.), the Federal Circuit appeal involving U.S. Patent No....more

Novartis’ Gilenya Patent Invalidated as Obvious

by Knobbe Martens on

On April 12, 2017, the Federal Circuit affirmed the determination by the US Patent and Trademark Office (USPTO), Patent Trial and Appeal Board (Board) that the claims of U.S. Patent No. 8,324,283 (“the ’283 patent”) were...more

Different Burdens of Proof and Different Records Allowed Different Conclusions on Validity by the PTAB and District Court

In Novartis AG v. Noven Pharmaceuticals Inc., Nos. 16-1678, -1679 (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed the PTAB’s decisions finding obvious certain patents that were previously found nonobvious in district...more

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

by BakerHostetler on

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

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