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

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

Is Evidence of Obviousness Always Required?

In K/S HIMPP v. Hear-Wear Technologies, LLC, the Federal Circuit affirmed the decision of the Patent Trial and Appeal Board (PTAB) that upheld the decision of the Central Reexamination Unit Examiner that refused to hold...more

IP Newsflash - May 2014

FEDERAL CIRCUIT CASES - Newsgroup Post Held to be A Printed Publication and Anticipatory Prior Art - On May 27, 2014, the Federal Circuit affirmed a decision granting summary judgment of invalidity by the...more

Protection of Designs in the United States

In recent years, protection of designs has become of increasing importance. As Steve Jobs famously noted: “People think it’s this veneer — that the designers are handed this box and told, ‘Make it look good!’ That’s...more

Negation of Motivation To Combine Defeats Obviousness - Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino

Addressing a finding of obviousness by the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) (Board) following inter partes reexamination, the U.S. Court of...more

Federal Circuit Reverses Board Rejections That Strayed From Claim Construction

In the non-precedential decision in In re Eaton, the Federal Circuit reversed the USPTO Board decision affirming rejections of anticipation and obviousness. The court found that the Board decision strayed from its own claim...more

Federal Circuit Review - October 2013

Late Payment of Patent Maintenance Fees Not Inequitable Conduct - In Network Signatures Inc, v. State Farm Mutual Automobile Insurance Co., Appeal No. 12-1492, The Federal Circuit reversed summary judgment of...more

Federal Circuit Vacates PTAB Decision Invalidating Rambus Patent

In Rambus, Inc. v. Rea, the Federal Circuit found several legal and procedural errors in the decision of the USPTO Patent Trial and Appeal Board (PTAB) that invalidated certain claims of the Rambus patent as obvious. While...more

IP Update, Vol. 16, No. 9, September 2013

Patents/Preliminary Injunction: Preliminary Injunction Ordered Based on Appellate Claim Construction Aria Diagnostics, Inc. v. Sequenom, Inc. - Addressing a preliminary injunction filed by a defendant in a...more

Rambus Inc. v. Rea (Fed. Cir. 2013) - A Little Reminder to the PTO about Due Process and the Importance of Objective Evidence of...

In its decision on September 24th, the Federal Circuit reminded the Patent Office that the principles of due process are still alive and kicking and cannot be ignored by the Patent Office's judiciary. The case came to...more

Federal Circuit Finds Taclonex Patent Not Obvious, Reverses USPTO Decision

In Leo Pharmaceutical Products, Lt. v. Rae, the Federal Circuit issued a rare decision reversing an obviousness determination by the USPTO Patent Trial and Appeal Board (PTAB)....more

Leo Pharmaceutical Products, Ltd. v. Rea (Fed. Cir. 2013)

The Federal Circuit's jurisprudence regarding obviousness as determined by the U.S. Patent and Trademark Office continues its post-KSR development in Leo Pharmaceutical Products, Ltd. v. Rea, which involves an obviousness...more

Federal Circuit Invalidates Prandin Patent Claim as Obvious

In its third look at the Novo Nordisk A/S patent related to Prandin®, in Novo Nordisk A/S v. Caraco Pharmaceutical Laboratories Ltd., the Federal Circuit affirmed the district court’s finding that claim 4 of U.S. Patent No....more

AIA Impact on Start Up Capital [Video]

An important consideration following the implementation of the America Invents Act is how will the law will affect capital raises for critical start-ups and emerging companies. In this video, Robert Greene Sterne, a founding...more

USPTO Finalizes "First Inventor to File" Rules

The United States Patent and Trademark Office (USPTO) finalized the rules of practice implementing the "first inventor to file" provision of the America Invents Act (AIA). The rules take effect March 16, 2013. The "first...more

Patent Watch: C.W. Zumbiel Co. v. Kappos

[T]he preamble constitutes a limitation when the claim(s) depend on it for antecedent basis, or when it "is essential to understand limitations or terms in the claim body." On December 27, 2012, in C.W. Zumbiel Co. v....more

Federal Circuit Upholds Board Determination That Biotechnology Invention Was Obvious

In In re Droge, the Federal Circuit upheld the decision of the USPTO Board of Patent Appeals and Interferences that found that claims directed to recombinant biotechnology methods were obvious. At 8 pages, the decision is one...more

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