News & Analysis as of

Obviousness United States Patent and Trademark Office

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

Novartis AG, LTS et al. v. Noven Pharmaceuticals, Inc. – Prior Judicial Opinions Don’t Bind the PTAB

After Novartis’ patents were found nonobvious by the Fed. Cir., affirming the Delaware District Court, defendant Noven filed for inter partes review (IPR) of U.S. Pat. Nos. 6316023 and 6335031, on rivastigmine and an...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

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

by Hodgson Russ LLP on

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

Double Patenting

Originally published in CIPA Journal - January/February 2017. After the Uruguay Round Agreements Act (URAA) (effective 8 June 1995), US patents have a patent term of 20 years measured from the filing date or the...more

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

by Brooks Kushman P.C. on

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.

by Goodwin on

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

by Weintraub Tobin on

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

by McDermott Will & Emery on

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

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