News & Analysis as of

Graham Factors

Expert Testimony on Lack of Motivation Won the Battle, but Lost the War

In BayerPharma AG v. Watson Laboratories, Inc., [2016-2169] (November 1, 2017), the Federal Circuit reversed the district court’s holding that claims 9 and 11 of U.S. Patent No. 8,613,950 would not have been obvious. The...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In Merck v. Hospira, the only precedential case decided this week, a majority of the panel affirms a determination of obviousness, noting that despite the objective indicia supporting patentability, the claimed process was...more

Second Chances for Secondary Considerations - Hiding the "Novelty Ball"

Like Johnny Cash’s famous tune “A Boy Named Sue,” “secondary considerations” of non-obviousness suffer for their name. Courts have historically relegated this 4th Graham factor to a “secondary” status, considering objective...more

PTO Cannot Raise & Decide Unpatentability Theories Never Presented by the Petitioner

In In re Magnum Tools International, Ltd., [2015-1300] (July 25, 2016) the Federal Circuit reversed the PTAB’s determination that the challenged claims U.S. Patent No. 8,079,413 were invalid for obviousness. The Federal...more

Failure to Address All Graham Factors Dooms CBM Petition

by McDermott Will & Emery on

Travelocity.com L.P. v. Cronos Technologies LLC - Addressing the showing required to institute covered business method (CBM) proceedings based on obviousness, the U.S. Patent and Trademark Office Patent Trial and...more

Three Point Shot - May 2014

by Proskauer Rose LLP on

Tiger Woods Misses the Cut in Golf Memorabilia Dispute - Tiger Woods skipped The Masters this year for the first time in 20 years because he was recuperating from back surgery. But his back may not be the only source...more

BakerHostetler Patent Watch: Apple, Inc. v. Int'l Trade Comm'n

by BakerHostetler on

[E]vidence relating to all four Graham factors -- including objective evidence of secondary considerations -- must be considered before determining whether the claimed invention would have been obvious to one of skill in the...more

Patent Watch: OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc.

by BakerHostetler on

[W]e have emphatically rejected any formal burden-shifting framework in evaluating the four Graham factors [including the objective considerations of nonobviousness]. The district court's failure to consider the evidence...more

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