Patents Prior Art Obviousness

News & Analysis as of

Genzyme Petitions Federal Circuit for Rehearing in Genzyme Therapeutic Products, Inc. v. Biomarin Pharmaceutical, Inc.

Many of the complaints from patent holders over the PTO's inter partes review process under the Leahy-Smith America Invents Act (codified in pertinent part at 35 U.S.C. §§ 311-319) stem from how the Office has implemented...more

Federal Circuit Affirms Tygacil Formulation Patent

In Apotex, Inc. v. Wyeth LLC, the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (PTAB) finding that Apotex had failed to show that claims directed to a specific formulation of tigecycline...more

Ariosa Loses Verinata Patent Challenge

Fetal diagnostic pioneer Ariosa Diagnostics lost its latest attempt to invalidate competitor Verinata Health’s U.S. Patent No. 8,318,430, “Methods of Fetal Abnormality Detection.” The USPTO’s Patent Trial and Appeal Board...more

Federal Circuit Emphasizes that an Obviousness Analysis Based on Common Sense Must be Supported by Substantial Evidence and...

A recent decision by the Federal Circuit suggests that relying on “common sense” in analyzing whether a patent is obvious in view of prior art cannot always be based on common sense alone. In a decision providing...more

Federal Circuit Provides Guidance on Use of Common Sense in Obviousness Analysis

Last week, in Arendi S.A.R.L. v. Apple, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of invalidity in an inter partes review that relied on “common sense” to supply a claim limitation that was...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

HP Inc. v. Big Baboon, Inc. (PTAB 2016) - Business Method Patent Not Invalid under 35 U.S.C. § 101

HP Inc. and SAP America, Inc. filed a Petition seeking a covered business method (CBM) patent review of claims 15 and 20–34 of U.S. Patent No. 6,343,275 owned by Big Baboon, Inc. The PTAB, however, determined that the...more

No Approval for Generic Product for Treatment of Rosacea **WEB ONLY**

Addressing infringement under the doctrine of equivalents and obviousness issues, the US Court of Appeals for the Federal Circuit affirmed the district court’s ruling barring approval of a generic version of Finacea® gel...more

Federal Circuit Distinguishes “Motivation to Combine” from “Expectation of Success” for Obviousness Purposes

Addressing issues of obviousness and the proper scope of inter partes review (IPR) reply briefs, the US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB or Board) IPR decision finding the...more

A Combination of References Can be Obvious Even if it Requires a Bit of Work

In Allied Erecting v. Genesis Attachments, LLC, [2015-1533] (June 15, 2016), the Federal Circuit affirmed the PTAB’s decision in IPR2014-001006 that claims 1–21 of U.S. Patent No. 7,121,489, were obvious. Allied first...more

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. (Fed. Cir. 2016)

Have you ever mixed up the obviousness determinations of "motivation to combine" and "reasonable expectation of success"? If so, you are apparently not alone -- the Federal Circuit recently faulted the Patent Trial and...more

TriVascular, Inc. v. Samuels (Fed. Cir. 2016)

Early last month, the Federal Circuit addressed an important question regarding the interplay between a decision to institute inter partes review before the Patent Trial and Appeal Board and the ultimate determination by the...more

Purdue Pharma L.P. v. Depomed, Inc. (Fed. Cir. 2016)

Last Thursday, the Federal Circuit handed down its non-precedential decision in Purdue Pharma v. Depomed, reviewing the decision of the Patent Trial and Appeal Board on three related inter partes reviews. While not quite a...more

Federal Circuit Review | March 2016

Under O2 Micro, a District Court Must Provide a Claim Construction if the Parties Dispute the Meaning of a Claim Term - In Eon Corp. IP Holdings LLC v. Silver Springs Networks, Inc., Appeal No. 2015-1237, the Federal...more

Method of Treatment Claims Cancelled in View of Prior Art under Theory of Obviousness, but Not Anticipation - Eli Lilly and Co. v....

In an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (Board) found all of Los Angeles Biomedical Research Institute’s (LA-Bio Med) patent claims unpatentable on the basis of obviousness in view of a...more

Expected Toxicity of Claimed Immunoconjugates Thwarts Showing of Prima Facie Obviousness (Phigenix, Inc. v. Immunogen, Inc.,...

In an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (Board) upheld the patentability of Phigenix’s patent claims that were challenged on the basis of obviousness. Phigenix, Inc. v. Immunogen, Inc.,...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

In Obviousness Analysis Loss of Benefit Is Not the Same as Inoperable (In re Urbanski)

Addressing “teaching away” arguments in the context of obviousness issues, the U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB or Board) obviousness decision, holding a person...more

Making the Obvious Point: How Failing to Provide Motivation to Modify a Prior Art Reference Can Lose Your Case, Even When That...

To invalidate a patent as obvious, a prior art reference often must be modified to incorporate the teachings of another prior art reference. However, the Supreme Court has held that the obviousness analysis must include some...more

It Can Happen: PTAB Alters Final Written Decision on Rehearing - Square, Inc. v. REM Holdings 3, LLC

In a rare decision granting a petitioner’s rehearing request, the Patent Trial and Appeal Board (PTAB or Board) reversed its earlier position in a final written decision where it found that the petitioner had not shown that...more

Directing a Known Treatment to a Sub-Population of Patients Is Obvious - Prometheus Labs, Inc. v. Roxane Labs., Inc.

Addressing obviousness issues, the U. S. Court of Appeals for the Federal Circuit affirmed the district court’s invalidity conclusion, agreeing that the elements present in the prior art—including earlier disclosed genus...more

Patent Owner Should Have Left “Good Enough” Alone - Belden Inc. v. Berk-Tek LLC

Addressing issues of obviousness and procedural issues related to the use of declarations, the U.S. Court of Appeals for the Federal Circuit affirmed in part and reversed in part a decision by the Patent Trial and Appeal...more

Federal Circuit Review | December 2015

Expert Testimony Not Always Necessary to Establish Prima Facie Obviousness Case in Inter Partes Review - In Belden Inc. v. Berk-Tek LLC, Appeal Nos. 2014-1575, 2014-1576, on appeal from an IPR, the Federal Circuit...more

Federal Circuit Sends Verinata Patent Back to PTAB – The Import of Background Prior Art In Supplying The Requisite Motivation To...

On November 16, 2015, the Federal Circuit vacated and remanded a Patent Trial and Appeal Board (PTAB, also the “Board”) inter partes review (“IPR”) decision holding that a prior art reference, though not identified as an...more

Connect the Dots: Petition That Fails to Explain How Prior Art Could Be Combined Can Doom a PTAB Proceeding

While claim charts are often used to compare prior art to challenged patent claims, simply submitting those claim charts as part of a petition to the Patent Trial and Appeal Board (PTAB), without more, could lose your case....more

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