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Merely Articulating a Goal Does Not Provide Reasonable Expectation of Success

The US Court of Appeals for the Federal Circuit affirmed a district court non-obviousness decision, finding that a prior art reference that articulates a goal without explaining how that goal is achieved does not provide a...more

Skepticism Does Not Need to Be Based on Impossibility

Addressing secondary considerations of non-obviousness, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) obviousness decision, finding that skepticism does not need to be...more

Stick to the Pleading when Deciding Motion to Dismiss

The US Court of Appeals for the Federal Circuit reversed a dismissal of a complaint for failing to state a claim under FRCP 12(b)(6), finding error in the district court’s use of judicial notice to do fact-finding outside the...more

“Equal to” Means “Not Exceed” when Determining Patent Term Adjustment

The US Court of Appeals for the Federal Circuit found that the US Patent and Trademark Office (PTO) erred in calculating a patent term adjustment (PTA) for a patent covering an oral osmotic form of an antihypertensive drug,...more

“Blocking Patent” Deterrence Effect May Discount Secondary Considerations for Follow-On Patents

The US Court of Appeals for the Federal Circuit affirmed a district court’s obviousness determination, finding that a patentee’s exclusive, in-licensed “blocking” patent limited the weight of secondary factors favoring...more

10/29/2018  /  Blocking Patents , Obviousness , Patents

Printed Publication Status Based on Public Accessibility

Addressing public accessibility of prior art, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) obviousness decision, finding that widely disseminated materials available on the...more

Weight Must Be Given to Interfering Party’s Certification of Patentability of New Claims Added During Interference Proceeding

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) finding that a specification’s disclosure of broad ranges failed to provide adequate written description for the claimed narrow...more

IPR Petition for Hair Loss Treatment Patent Restored

In an unusual ruling, the Patent Trial and Appeal Board (PTAB) granted a petitioner’s request for rehearing and instituted inter partes review (IPR) on a previously denied ground, finding that it previously had applied an...more

Distribution Agreement Qualifies as Commercial Offer for Sale

Addressing what qualifies as an invalidating offer for sale under 35 USC 102(b), the US Court of Appeals for the Federal Circuit reversed a district court finding that a distribution agreement was not a commercial offer for...more

To Be Anticipatory, Reference Must Disclose All Claim Elements Arranged as in Claim

The US Court of Appeals for the Federal Circuit affirmed a decision that a patent challenger at the Patent Trial and Appeal Board (PTAB) must prove invalidity by a preponderance of evidence and must establish anticipation...more

Totality of Evidence Must Be Considered in Assessing Obviousness

The US Court of Appeals for the Federal Circuit reversed a finding of non-obviousness, concluding that the district court clearly erred in relying on selective expert testimony, rather than a totality of the evidence, in...more

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