Prior Art

News & Analysis as of

Stating Problems that the Claimed Invention is Trying to Solve Appears helpful to Vindicate Patent Eligibility

In Trading Technologies International, Inc. v. CQG, Inc. et al., [2016-1616] (January 18, 2017), the Court of Appeals for the Federal Circuit (CAFC) affirmed the district court’s holding of patent eligibility with regard to...more

Hindsight Cannot be the Thread that Stitches the Prior Art Patches into the Claimed Invention

In Metalcraft of Mayville, Inc., v. The Toro Company, [2016-2433, 2016-2514] (February 16, 2017), the Federal Circuit affirmed a modified preliminary injunction against Toro’s continued infringement of U.S. Patent No....more

Sportbrain Sues Smartwatch Manufacturers, PTAB institutes IPR against Patent-in-Suit

Sportbrain Holdings LLC (“Sportbrain”) is a company that was previously engaged in the business of selling fitness trackers. Sportbrain recently sued eight smartwatch manufacturers for alleged infringement of its U.S. Patent...more

PTAB Terminates Interference Involving Revolutionary Gene Modification Technology

On February 15, 2017, the Patent Trial and Appeal Board (PTAB) terminated a patent interference between the Broad Institute and the University of California, finding the parties’ respective claims to CRISPR-Cas9 systems and...more

PTAB Grants Apotex’s Petition for IPR on Amgen’s Neulasta (Pegfilgrastim) Patent

The Patent Trial and Appeal Board has granted Apotex’s petition for inter partes review of Amgen’s U.S. Patent 8,952,138, finding that Apotex has a reasonable likelihood in prevailing in its assertions that claims 1-24 are...more

Just Because One Could Doesn’t Mean One Would

In Personal Web Technologies, LLC v. Apple, Inc., [2016-1174] (February 14, 2017), the Federal Circuit affirmed the Board’s claim construction but vacated the Board’s obviousness determination because the Board did not...more

Federal Circuit Again Reverses PTAB Obviousness Determination

In what is becoming a familiar basis for reversal of PTAB decisions, the Federal Circuit yet again reversed the PTAB for its failure to adequately explain the basis for combining multiple prior art references in support of...more

IPR Denied after Board Finds Asserted PCT Publication Not Entitled to Priority Application’s Filing Date under Pre-AIA 35 U.S.C. §...

The PTAB denied institution of an IPR based on patent owner’s challenge to the prior art status of a PCT publication that was asserted by the petitioner as pre-AIA 35 U.S.C. § 102(e) prior art in Forty Seven, Inc. v....more

Do I Need a Patent Prior Art Search?

This is a common question among many new inventors. To be patentable, an invention must be novel and non-obvious in view of the “prior art.” Prior art includes prior filed patents, patent applications, and other public...more

The Removal of Matter from the Provisional Application is Significant to the Interpretation of the Claims in the Non-Provisional...

In MPHJ Technology Investments, LLC. v. Ricoh Americas Corp., [2016-1243] (February 13, 2016), the Federal Circuit affirmed the PTAB decision that claims 1-8 of U.S. Patent No. 8,488,173 were invalid on the grounds of...more

Federal Circuit Looks to Provisional Patent Application in Determining Claim Scope

Differences between a provisional patent application and a nonprovisional application claiming priority to the provisional application may inform claim construction, following the Federal Circuit’s recent decision in MPHJ...more

You’re So Vague: Federal Circuit Sends IPR Decision Back to PTAB for More Thorough Analysis

In a precedential decision, the Federal Circuit reaffirmed that the Patent Trial and Appeal’s Board (PTAB) is required to explicitly state motivations to combine prior-art references in claim rejections for obviousness. ...more

Managing Patent Portfolios and Drafting Applications To Withstand IPR Challenges

Since implementation of the Leahy-Smith America Invents Act, inter partes review (“IPR”) and other post-grant proceedings have been used successfully to challenge and invalidate thousands of patent claims. Over 2,000 IPR...more

Court Rejects Theory Of Derivation Based On FDA Requirement

The Federal Circuit decision in Cumberland Pharmaceuticals Inc. v. Mylan Institutional LLC may be more interesting for what Mylan argued than for what the Federal Circuit decided. However, it could be an important decision...more

PTAB Finds Secondary Considerations Outweigh Evidence of Obviousness

In a final written decision, the Patent Trial and Appeal Board (PTAB) found that claims 1-20 of U.S. Patent No. 8,550,271 (the “’271 patent”) were not unpatentable because “compelling evidence of secondary considerations of...more

Evidence to Negate PGR Eligibility Based on Filing Date May Not Be Sufficient to Establish Filing Date for Purposes of Antedating...

Addressing for the first time the sufficiency of evidence needed to establish an earlier priority date for purposes of post-grant review (PGR) eligibility versus the evidence required to antedate a prior art reference, the...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

Patent Owner Files Petition for Writ of Mandamus to Federal Circuit Regarding PTAB Estoppel

Although we typically focus our posts on biosimilar-specific issues, we wanted to highlight a recent IPR-related filing that is likely of interest to many of our readers. The scope of estoppel that attaches to a...more

Eli Lilly & Co. v. Teva Parenteral Medicines, Inc. (Fed. Cir. 2017)

From the nadir of the Supreme Court's allegations that the Federal Circuit "fundamentally misunderstood" the law of inducing infringement in Limelight Networks, Inc. v. Akamai Technologies, Inc., the nation's specialized...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

How to Search Like an Examiner With the Scientific and Technical Information Center

The latest trend in patent examiner prior art searches is pushing examiners to use the Scientific and Technical Information Center (STIC) Program to use more foreign patents and foreign non-patent literature during patent...more

Factual Dispute Defeats Summary Judgment on Inherent Anticipation

Addressing inherent anticipation and inequitable conduct issues, the US Court of Appeals for the Federal Circuit vacated a summary judgment of inherent anticipation, finding that material facts remained in dispute, and...more

PTAB Convinced by Secondary Considerations to Find Claims Non-Obvious in IPR

On January 19, 2017, the Board issued a final written decision in World Bottling Cap, LLC v Crown Packaging Technology, Inc. (IPR2015-01651) finding the challenged claims were not unpatentably obvious over the references...more

Inherent Anticipation for Biotechnology Inventions

Anticipation by inherent disclosure requires that a single prior art reference necessarily includes the unstated limitation. The unpredictable nature of biological processes means that winning summary judgment of invalidity...more

ClassCo, Inc. v. Apple, Inc.: A Reminder Of Obviousness Analysis Under KSR

In ClassCo, Inc. v. Apple, Inc. the Federal Circuit upheld a decision from the Patent Trial and Appeal Board (“the Board”), which invalidated several claims of ClassCo’s US Patent No. 6,970,695 (“the ’695 patent”) that...more

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