News & Analysis as of

Patents Nonobvious

WilmerHale

Federal Circuit Patent Watch: An Expert Need Not Have Acquired the Requisite Skill Level Prior to the Time of the Invention

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Precedential and Key Federal Circuit Opinions - WISCONSIN ALUMNI RESEARCH FOUNDATION v. APPLE INC. [OPINION] (2022-1884, 8/28/2024) (Prost, Taranto, and Chen) - Prost, J. The Court affirmed two final judgments of the...more

Womble Bond Dickinson

USPTO Issues Updated Examination Guidance After Federal Circuit Overhauls Test for Design Patent Obviousness

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The United States Patent and Trademark Office (USPTO) has issued a Memorandum to the Corps of Patent Examiners (the “Guidance”), attempting to provide clarity in the wake of the Federal Circuit’s highly anticipated en banc...more

Knobbe Martens

Federal Circuit Review | March 2024

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Defining Indefiniteness: When Are Claim Limitations Contradictory? In Maxell, Ltd., v. Amperex Technology Limited, Appeal No. 23-1194, the Federal Circuit held that  two claim limitations are not contradictory if they...more

McDermott Will & Emery

Faulty Jury Instruction Tampered With Tamper-Proof Trial

The US Court of Appeals for the Federal Circuit affirmed in part, vacated in part and remanded a district court decision after concluding that a jury instruction on the objective indicia of nonobviousness that failed to...more

AEON Law

Patent Poetry: Just Because It’s on the Internet Doesn’t Mean It’s “Publicly Accessible”

AEON Law on

The Patent Trial and Appeal Board (PTAB or Board) has denied institution of a petition for inter partes review (IPR) because the petitioner failed to show that its primary asserted prior reference, available through the...more

McDermott Will & Emery

Sliced and Diced: Operating Manuals Are Printed Publications

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The US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s non-obviousness determination, finding that the Board erred in determining that an operating manual did not qualify as printed...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Yita LLC v. MacNeil IP LLC, 69 F.4th 1356 (Fed. Cir....

Yita LLC petitioned for IPR of two patents owned by MacNeil IP LLC. This summary focuses on the proceedings on MacNeil’s patent relating to vehicle floor trays that “closely conform[]” to certain walls of the vehicle foot...more

McDermott Will & Emery

Same Applicant, Similar Claims Support Obviousness-Type Double Patenting Rejection

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board obviousness-type double patenting rejection, finding that an unexpected mechanism of action does not render the known use of a known...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Standards to Establish Nexus Between Objective Evidence and Non-Obviousness, and to Establish Copying in...

In this case, the Federal Circuit determined the sufficiency of evidence to rebut a nexus between objective evidence and non-obviousness; and to establish the objective indicia of copying....more

McDonnell Boehnen Hulbert & Berghoff LLP

Jager Pro, Inc. v. W-W Manufacturing Co. (Fed. Cir. 2023)

Although merely exemplifying the burden imposed on an appellant by the Federal Circuit's substantial evidence standard of review over decisions by the U.S. Patent and Trademark Office regarding the facts underlying legal...more

WilmerHale

Federal Circuit Patent Watch: The Board should not have to decode a petition

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Precedential and Key Federal Circuit Opinions - CYNTEC COMPANY, LTD. v. CHILISIN ELECTRONICS CORP., CHILISIN AMERICA LTD. [OPINION] (2022-1873, 10/16/23) (Moore, Stoll, Cunningham) - Stoll, J. The Court reversed the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2023 #3

Volvo Penta of the Americas, LLC v. Brunswick Corp., Appeal No. 2022-1765 (Fed. Cir. Aug. 24, 2023) In its only precedential patent case of the week, the Federal Circuit held the Patent Trial and Appeal Board erred in...more

Sheppard Mullin Richter & Hampton LLP

In re Couvaras, No. 2022-1489 (Fed. Cir. June 14, 2023)

This case addresses obviousness under 35 U.S.C. § 103 in relation to a method of increasing prostacyclin release to reduce hypertension in a patient. In particular, this case discusses issues relating to motivation to...more

McDermott Will & Emery

Hit a Nerve? Obviousness Inquiry Must Address Claims at Issue

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The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board non-obviousness decision, finding that the context of the proposed combination of prior art in the Board’s obviousness inquiry...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2023 #3

SNIPR Technologies Limited v. Rockefeller University, Appeal No. 2022-1260 (Fed. Cir. July 14, 2023) Our case of the week addresses a wrinkle in the law concerning disputes between parties that filed patent applications...more

Haug Partners LLP

Analyzing Nexus: Recent Federal Circuit Opinions Where Individual Patent Claim Limitations Are in the Prior Art

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This article compares two recent Federal Circuit opinions concerning IPR cases addressing the nexus requirement for objective indicia of non-obviousness. These cases revolve around the patentee’s use of a commercial...more

Haug Partners LLP

In re Couvaras: Limitations of Unexpected Results for Non-Obviousness of Claimed Mechanisms of Action

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On June 14, 2023, the Federal Circuit affirmed the decision of the Patent Trial and Appeal Board upholding an Examiner’s rejection of all pending claims in U.S. Patent Application 15/131,442 (’442 application). The Federal...more

Sheppard Mullin Richter & Hampton LLP

Yita LLC v. MacNeil IP LLC 2022-1373, 2022-1374 (Fed. Cir. June 6, 2023)

This decision addresses the PTAB’s secondary considerations analysis in an IPR Final Written Decision. Background - Appellant Yita sought inter partes review of two patents sharing a specification, both of which are...more

McDermott Will & Emery

The Best Option Is Obviously Not the Only Option

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Following a jury verdict finding infringement of two patents and awarding $2.2 billion, the Patent Trial & Appeal Board issued a final written decision finding all claims in one of the asserted patents invalid. The Board...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2023 #2

In re: John L. Couvaras, Appeal No. 2022-1489 (Fed. Cir. June 14, 2023) In our Case of the Week, the Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeals Board decision that a patent application’s...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2023

Yita LLC v. MacNeil IP LLC, Appeal Nos. 2022-1373, -1374 (Fed. Cir. June 6, 2023) In appeals from two inter partes reviews before the Patent Trial and Appeal Board (the Board) on related patents, the Federal Circuit...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2023 #4

FS.com Inc. v. Intern. Trade Comm., Appeal No. 2022-1228 (Fed. Cir. Apr. 20, 2023) Our case of the week focuses on patent enablement. In particular, the Federal Circuit considered the enablement requirement in the...more

McDermott Will & Emery

Press Pause: De Novo Review Not Always Required for Obviousness

A divided panel of the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that certain challenged claims were nonobvious after applying the substantial evidence test to resolve a...more

Bradley Arant Boult Cummings LLP

Attempts to Drive the Obviousness Standard for Design Patents Similar to KSR Failed

Recently, the Federal Circuit affirmed a finding of non-obviousness from the Patent Trial and Appeal Board (PTAB) of a design patent owned by GM. While non-precedential, this decision is nonetheless a valuable read because...more

WilmerHale

Federal Circuit Patent Watch: PTAB erred in not directly or implicitly addressing contested arguments in petition

WilmerHale on

Precedential Federal Circuit Opinions - PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. [OPINION]  (2021-1942, 2021-1975, 9/27/2022) (Prost, Reyna, and Stark) - Prost, J. Affirming in part and vacating in part decision of...more

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