News & Analysis as of

Obviousness

Unknown Problem Plus Nonobvious Solution Cannot Render Patent for Sublingual Formulation of Asenapine Obvious

by McDermott Will & Emery on

The District Court for the District of Delaware found Forest Labs’ patent for sublingual or buccal compositions of asenapine and methods of using such compositions to treat mental disorders, including schizophrenia and mania,...more

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

In Sanofi v. Watson Labs., the Circuit affirms a determination of induced infringement of one patent and direct infringement of another, thus assuring Sanofi another 12 years of exclusivity as to its Multaq® atrial...more

Bayer Pharma AG v. Watson Laboratories, Inc. (Fed. Cir. 2017)

The Federal Circuit reversed a finding of non-obviousness on Friday based on clear error by the District Court on factual underpinnings of its obviousness determination, in Bayer Pharma AG v. Watson Laboratories, Inc. Such...more

PTAB Designates Three Informative Opinions Which Address 35 U.S.C. § 325(d)

by Jones Day on

On October 24th, the PTAB issued the following notice, designating the following decisions, which address 35 U.S.C. § 325(d), as informative....more

The PTAB Reverses Original Decision After the Federal Circuit Reverses Key Findings and Limits Issues for Review

by Knobbe Martens on

On October 17, 2017, the PTAB issued a final written decision in an IPR holding all claims unpatentable after the Federal Circuit vacated and remanded the PTAB’s previous final written decision. The PTAB reversed their...more

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

Petitioners Must Explain Combining Multiple Embodiments of Reference in Obviousness Argument

by Jones Day on

In a series of recent decisions, the PTAB denied institution on a dozen petitions on related patents because of one problem it identified in the petitioner’s arguments. All of the petitioner’s proposed grounds challenged the...more

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

In Bayer v. Watson, the panel throws out Bayer’s patent to its Staxyn erectile dysfunction drug as being obvious, noting that the district court focused too heavily on the commercial availability of the prior art. The panel...more

Process Step Order Cannot Save Claim with Conventional Manufacturing Steps From Obviousness

by Locke Lord LLP on

On October 26, 2017, the Federal Circuit, in a split decision, upheld the invalidity of the asserted claims of U.S. Patent No. 6,486,150 (“the ’150 patent”) as obvious under 35 U.S.C. § 103. See Merck Sharp & Dohme Corp. v....more

Oil States Energy and SAS Institute: SCOTUS to Review Inter Partes Reviews

by Revision Legal on

As we recently discussed with respect to the proposed STRONGER Patents Act of 2017, legal debate continues to swirl around inter partes reviews. The US Supreme Court has entered the ring recently by accepting certiorari on...more

Process Discoverable by “Merely Ordinary Experimentation” Rendered Obvious

In Merck Sharp & Dohme Corp. v. Hospira, Inc., No. 2017-1115 (Fed. Cir. Oct. 26, 2017), a divided Federal Circuit panel affirmed the district court’s finding that a claimed process for making a chemical compound was obvious....more

Federal Circuit Finds NuvaRing Patent Nonobvious Without Hindsight

by Foley & Lardner LLP on

In a non-precedential decision issued in Merck Sharp & Dohme B.V., v. Warner Chilcott Co. LLC, the Federal Circuit reversed the district court’s obviousness ruling as being improperly grounded in hindsight. This decision...more

PTAB Grants Rare Request for Additional Discovery In IPR

by Foley & Lardner LLP on

In Mylan v. Allergan (IPR2016-00127, Paper No. 73), the PTAB granted a rare request for discovery filed be Petitioner in response to summaries of data presented in a Patent Owner Response used to rebut obviousness. In...more

Merck Sharp & Dohme Corp. v. Hospira, Inc. (Fed. Cir. 2017)

The Federal Circuit continues its explication of the law of obviousness post-KSR Int'l. v. Teleflex Inc. (and Judge Pauline Newman continues to disagree with her brethren in some regards) in a decision handed down last...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

Insufficient Teaching Away Throws Cold Water on Heat-Treating Patent

by McDermott Will & Emery on

In a non-precedential decision, the US Court of Appeals for the Federal Circuit concluded that the degree of teaching away is a question of fact reviewable for substantial evidence, and affirmed a determination of obviousness...more

Pfizer obtains orders of prohibition on polymorphic form patent

by Smart & Biggar on

On September 22, the Federal Court, in a pair of decisions, granted Orders of prohibition under the Patented Medicines (Notice of Compliance) Regulations preventing Apotex and Teva from marketing their generic...more

Challenged Claims are Obvious Based on Patent Owners’ Prior Art

by McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB or Board) decision finding the challenged claims obvious over a single prior art reference owned by the patent owner,...more

USPTO and EPO Examiners Discuss Key Considerations for Filing Effective Precision Medicine and Bioinformatics Applications in the...

At a symposium and webinar presented by Fenwick & West and Mewburn Ellis, we asked U.S. Patent and Trademark Office and European Patent Office examiners to provide perspective on the preparation and prosecution of patent...more

That’s How the Prima Facie Obviousness Cookie Crumbles

by McDermott Will & Emery on

Finding that the prior art taught all of the claim elements and provided a motivation to combine, the US Court of Appeals for the Federal Circuit concluded that a challenged patent claim would have been obvious...more

Update on AstraZeneca SCC and developments on “overpromising” under grounds other than utility

by Smart & Biggar on

SCC Update. On October 23, 2017, the Supreme Court of Canada dismissed Apotex’s motion to amend the Supreme Court of Canada’s judgment in AstraZeneca Canada Inc v Apotex Inc, 2017 SCC 36 (reported here, relating to...more

Down to the Wire: Patentee Must Rebut Inherent Functionality of Prior Art

by McDermott Will & Emery on

Despite an error by the Patent Trial and Appeal Board (PTAB or Board) in relying on inherency to render an obviousness determination, the US Court of Appeals for the Federal Circuit affirmed the PTAB decision, finding...more

Federal Circuit Clarifies the Requirements for a Teaching Away by the Prior Art

In a precedential opinion issued on October 11, 2017, the United States Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeals Board’s (“PTAB”) finding of non-obviousness where the prior art taught...more

PTAB Sheds Light On Video Game Patent Validity

The Patent Trial and Appeal Board (PTAB) recently upheld the patentability of a video game-related patent, ruling the computer graphics features were not obvious over the prior art. The patent (US Patent 7,061,488) address...more

Merck Sharp & Dohme B.V. v. Warner Chilcott Co. (Fed. Cir. 2017)

The Supreme Court most recently revisited the proper standards for making an obviousness determination ten years ago, in KSR Int'l. Co. v. Teleflex. Inc. While in some ways changing the obviousness standard, for example...more

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