Patents Prior Art Obviousness

News & Analysis as of

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

Starbucks Brews Successful CBMs - Starbucks Corp. v. Ameranth, Inc.

Addressing patent eligibility for a covered business method (CBM) review under Section 18 of the America Invents Act (AIA), the Patent Trial and Appeal Board (PTAB, the Board) found the patents-at-issue to be eligible and...more

Preponderance Standard Applies to Ex Parte Re-examinations - Dome Patent L.P. v. Lee

Addressing the presumption of validity in ex parte re-examinations, the U.S. Court of Appeals for the Federal Circuit reiterated that the presumption of validity does not apply to patents under reexamination in the U.S....more

Declarations from Inventors of Prior Art Could Create Genuine Dispute over Motivation to Combine - Ivera Medical Corp. v. Hospira,...

Addressing the issue of obviousness, the U.S. Court of Appeals for the Federal Circuit held that the district court erred in granting summary judgment of invalidity because plaintiff patentee established a genuine issue of...more

Phigenix v Genentech; Claims Found Not Unpatentable In Final Written Decision

On October 27, the PTAB issued a Final Written Decision in an IPR challenging claims 1-8 of US Patent 8,337,856, directed to immunoconjugates comprising an anti-ErbB antibody, such as the humanized anti-ErbB2 antibody known...more

Stratasys Extrudes Past IPR Petitions; Set to Build 3D Printer Case Against Afinia

Stratasys asserted four of its 3D printing patents against Afinia in the U.S. District Court of Minnesota. Afinia responded by petitioning for inter partes review (IPR) of the asserted patents. Yet, Stratasys escaped...more

Morsa II: Admissions Enable Prior Art

In its 2013 decision in In re Morsa, the Federal Circuit vacated an anticipation rejection where “both the Board and the examiner failed to engage in a proper enablement analysis” to establish the enabling quality of the...more

Spectrum Pharmaceuticals Inc. v. Sandoz Inc. (Fed. Cir. 2015)

Last week the Federal Circuit affirmed a District Court's finding of invalidity and non-infringement in ANDA litigation between Spectrum Pharmaceuticals and Sandoz. In so doing, the Court deferred to the factual...more

In re Steed (Fed. Cir. 2015) - Swearing Behind Reference Still Requires Proof of (Timely Filed) Evidence

Thomas Steed, Sourav Bhattacharya, and Sandeep Seshadrijois (collectively "Steed") filed a patent application entitled "Web-Integrated On-Line Financial Database System and Method for Debt Recovery," on April 6, 2004, with...more

Claims Obvious Despite Contrary Jury Verdict - ABT Systems, LLC v. Emerson Electric Co.

Addressing the issue of obviousness, the U.S. Court of Appeals for the Federal Circuit overturned the jury verdict of non-obviousness and focusing on the nature of the problem to be solved, concluded that the asserted claims...more

Claimed Formulation Not Obvious Despite Recitations Falling Within Prior Art Ranges - Allergan, Inc. v. Sandoz Inc.

Addressing obviousness issues, the U.S. Court of Appeals for the Federal Circuit affirmed a lower court’s finding that patents were valid and infringed, despite undeniably including recitations falling within a prior art...more

Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: Novartis AG

Earlier this summer, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted...more

Plaintiff Avoids Headache of Having Its Thermometer Patent Invalidated at Summary Judgment

In a recent District of Massachusetts case, a defendant attempted to use the crucible of summary judgment to invalidate the plaintiff’s body temperature detection patents. But, as shown in the Court’s ruling, sometimes that...more

Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: WARF, Marshfield Clinic, and MCIS, Inc.

Earlier this summer, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted...more

A Dose of Reality Can Treat Infectious Hindsight

In Ivera Medical Corp. v. Hospira, Inc., [2014-1613, 2014-1614] (September 8, 2015), the Federal Circuit reversed the district court’s summary judgment of invalidity of U.S. Patent Nos. 7,780,794, 7,985,302, and 8,206,514,...more

Board Boots Bass Tecfidera IPR on the Merits

On September 2, 2015, the USPTO Patent Trial and Appeal Board (PTAB) denied institution of another Inter Partes Review brought by Kyle Bass, the Coalition for Affordable Drugs, and other related entities. In denying the...more

Non-Analogous Art Is Not Prior Art for Purposes of Obviousness - Circuit Check Inc. v. QXQ Inc.

Addressing the issue of obviousness, the U.S. Court of Appeals for the Federal Circuit reversed the district court and restored the jury’s verdict finding the patents-at-issue not invalid, because the prior art in dispute was...more

IP Newsflash - August 2015 #4

SUPREME COURT CASES - The Supreme Court Upholds Prohibition on Charging Royalties After Patent Expiration - In Kimble v. Marvel Entertainment LLC, 576 U.S. ---- (2015), the Supreme Court declined to overrule its...more

Federal Circuit Review | August 2015

Online Banking Patents Based On “Abstract Ideas” Held Patent Ineligible Under Alice - In Intellectual Ventures I LLC v. Capital One Bank (USA), NA, Appeal No. 2014-1506, the Federal Circuit held that claims directed to...more

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