Prior Art Obviousness

News & Analysis as of

Cutsforth Inc. v. MotivePower, Inc.

Back in January 2002, when this author was near the beginning of his patent law career, the Federal Circuit handed down the In re Sang-Su Lee case. Among other things, this case provided patent practitioners with support for...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

Losing Competing Property Not A Teaching Away

In In re Urbanski, the Federal Circuit upheld the decision of the USPTO Patent Trial and Appeal Board (PTAB) finding the claims of Urbanski’s patent application obvious. Urbanski had argued that the cited references taught...more

It is Obvious to Vary Result-Effective Variables

In In re Urbanski, [2015-1272] (Fed. Cir. 2016), the Federal Circuit affirmed the PTAB’s affirmance of the rejection on obviousness grounds of claims to a method for making an enzymatic hydrolysate of a soy fiber. The...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

Ariosa Diagnostics v. Verinata Health, Inc. (Fed. Cir. 2015)

Last month, in Ariosa Diagnostics v. Verinata Health, Inc., the Federal Circuit vacated the decisions of the Patent Trial and Appeal Board concluding that Appellant Ariosa Diagnostics had not met its burden of proving that...more

Federal Circuit Remands IPRs to PTAB for Reference Consideration

The non-invasive prenatal testing field has been an active area for patent challenges. Ariosa has challenged patents held by competitors Sequenom and Verinata. The latter is patent owner in two IPR proceedings challenging...more

A Substantially Pure Isomer Is Obvious When the Completely Pure Isomer Is Known In The Art - Spectrum Pharms., Inc. v. Sandoz Inc.

Many prior cases have addressed whether a pure stereoisomer is obvious when the corresponding 50/50 mixture is known in the prior art. In upholding a finding of summary judgment, however, the U.S. Court of Appeals for the...more

Patent Applicant Must Provide Clear Evidence to Antedate a Prior Art Reference - In re Steed et al.

Addressing the requirements for antedating a prior art reference (for a pre-AIA patent application), the U.S. Court of Appeals for the Federal Circuit affirmed the decision of the Board of Patent Appeals and Interferences...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

Federal Circuit Review | November 2015

Federal Circuit Declines to Reverse Invalidity, Noninfringement Holdings - In Spectrum Pharmaceuticals, Inc. v. Sandoz Inc., Appeal No. 2014-1407, the Federal Circuit affirmed the district court’s grant of summary...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

108 Results
|
View per page
Page: of 5

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
×