News & Analysis as of

Obviousness

The Federal Circuit Criticizes A PTAB Partial Institution

by Jones Day on

The PTAB’s practice of partially instituting IPRs has been in the news lately, with Jones Day recently arguing against that practice at the Supreme Court on behalf of the SAS Institute (“SAS”). On December 5, 2017, the week...more

Obviousness v. Anticipation: That Which Doesn’t Disclose Still Could Teach

By Bryan K. Wheelock, Principal In CRFD Research, Inc., v. Matal, [2016-2198] (December 5, 2017), the Federal Circuit affirmed two Final Written Decisions invaliding claims of U.S. Patent No. 7,191,233 on user-directed...more

Inherent Obviousness: Available IPR Rationale With a High Standard

by Jones Day on

On November 28, 2017, the PTAB issued a final written decision upholding the patentability of U.S. Patent No. 6,667,061 (IPR2016-01096). The ’061 patent is owned by Alkermes Pharma Ireland, Ltd. and Alkermes Controlled...more

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

Arctic Cat v. Bombardier deals with obviousness, patent marking, reasonable royalties, willfulness and enhanced damages. The panel affirms all of the district court’s rulings other than as to patent marking, which it remands...more

Eli Lilly and Company v. Perrigo Co. (Fed. Cir. 2017)

In an appeal decided last month, the Federal Circuit affirmed a decision by the District Court for the Southern District of Indiana finding claim 20 of U.S. Patent No. 8,435,944 to be invalid as obvious. The panel also...more

Federal Circuit Review - November 2017

by Knobbe Martens on

Fractured Federal Circuit Holds Patent Owner Does Not Bear Burden of Persuasion in IPR Motions to Amend - In Aqua Products, Inc. v. Matal, Appeal No. 2015-1177, the Federal Circuit, sitting en banc, held that a patent...more

PTAB Underscores Reasons for Denying Institution Under 35 USC § 325(d)

by McDermott Will & Emery on

The Patent Trial and Appeal Board (PTAB or Board) designated as informative three decisions denying institution of inter partes reviews. CULTEC, Inc. v. Stormtech LLC, Case No. IPR2017-00777 (Grossman, APJ) (Aug. 22, 2017);...more

The Importance of Obviousness

by Burns & Levinson LLP on

Over a number of years, the Federal Circuit has stated the conditions for an obviousness rejection: the cited references must teach or suggest all the limitations of the claim, there must be a reason to combine the...more

Extrinsic Evidence Makes a “Swell” Difference in Claim Construction

by McDermott Will & Emery on

Upholding a Patent Trial and Appeal Board (PTAB or Board) patentability finding, the US Court of Appeals for the Federal Circuit found that the PTAB did not err in determining the broadest reasonable construction of a claim...more

PTAB Denies Petition to Institute IPR Because Petitioner Failed to Make Threshold Showing That a Reference Was Publicly Accessible...

The Patent Trial and Appeal Board (PTAB) denied Pfizer, Inc.’s (“Petitioner”) petition to institute an inter partes review (IPR) of the sole claim of Biogen Inc.’s (“Patent Owner”) U.S. Patent 8,329,172 (the “’172 Patent”)....more

Secondary Considerations Transformed into Rebuttal Evidence

by McDermott Will & Emery on

Addressing the issue of prima facie obviousness, the US Court of Appeals for the Federal Circuit affirmed a district court’s ruling that evidence of secondary considerations failed to overcome a strong showing of obviousness....more

Amendment of Claims in Parent Application Do Not Apply to Continuation Claims that do not have the Amended Language

In Sanofi v. Watson Laboratories Inc., Sandoz Inc.,, [2016-2722, 2016-2726] (November 9, 2017), the Federal Circuit affirmed the district court’s final judgment rejecting the obviousness challenge to claims 1–6, 8–13, and 16...more

The Board Gives Section 325(d) Sharp Teeth—Part II – The Petitioner's Criticality to Selecting and Using The Right Prior Art

This is the second of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part three will appear in our December 2017 newsletter....more

Three Reasons to File a Design Patent with your Utility Patent

by Dorsey & Whitney LLP on

When filing a utility patent that includes design elements, the patentee is often faced with the question “should I also file a design patent?” The patentee may answer with “there is no need to file the design patent since...more

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

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