New Developments in Obviousness-Type Double Patenting and Original Patent Requirements — Patents: Post-Grant Podcast
Inter Partes Review: Validity Before the PTAB
The Federal Circuit upheld the PTAB’s decision deeming an integrated circuit connector patent unpatentable for obviousness, despite concluding that the Board’s claim construction was erroneous. The Court also rejected a...more
The concept of the "person of ordinary skill in the art" (POSITA) remains pivotal in patent law, particularly in evaluating obviousness under 35 U.S.C. § 103 and compliance with enablement and written description requirements...more
Determining whether a claimed invention is obvious under 35 U.S.C. § 103 often depends on whether the prior art provides a clear motivation for modifying existing knowledge. Central to this analysis is the concept of a...more
While courts have often warned that hindsight bias should be avoided when assessing whether a patented invention would have been obvious to the skilled person, the application of this principle can be challenging in practice....more
Bearbox LLC v. Lancium LLC, Appeal No. 2023-1922 (Fed. Cir. Jan. 13, 2025) In this week’s Case of the Week, the Federal Circuit affirmed a district court’s determination that appellants Bearbox and Austin Storms—Bearbox’s...more
Addressing the issue of obviousness, the US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board decision, finding that the challenged patent claims were obvious because a person of ordinary skill...more
As 2024 draws to a close, several crucial developments — some aimed at modernizing long-standing legal practices, others addressing emerging challenges — have reached patent law. Originally published in Law360 - December...more
Before Dyk, Clevenger, and Stoll. Appeal from the United States District Court for the District of Delaware. Summary: An expert witness can testify from the perspective of a POSITA at the time of the invention even if they...more
This decision emphasizes the significance of broader public dissemination to meet the statutory requirement of “publicly disclosed” for purposes of exceptions to prior art under 35 U.S.C. § 102(b)(2)(B)....more
Sanho Corp. v. Kaijet Technology International Limited Inc., Appeal No. 2023-1336 (Fed. Cir. July 31, 2024) In our Case of the Week, the Federal Circuit held that the private but non-confidential sale of thousands of...more
Following the U.S. Supreme Court’s invalidation of a counterpart U.S. patent in the same family for lack of enablement (21-757 Amgen Inc. v. Sanofi (05/18/23) (supremecourt.gov)), the UPC has now rendered a decision on its...more
Unlike utility patents, which are frequently invalidated on obviousness grounds, design patents historically faced a rigid test making obvious findings rare. The Federal Circuit has just issued an en banc decision that upends...more
There have been only a few precedential decisions from the Federal Circuit related to obviousness since spring sprung. While these decisions have produced mixed results for the lower courts, clinical study protocols have held...more
Antibody-drug conjugate (ADC) is a promising class of cancer treatments with accelerating U.S. Food and Drug Administration (FDA) approval and rapidly growing market size as discussed in previous articles in this series. This...more
For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued “Updated Guidance for Making a Proper Determination of Obviousness” under the U.S. Supreme Court’s ruling in KSR Int’l Co. v....more
Hosted by American Conference Institute, the 22nd Advanced Summit on Life Sciences Patents returns for another exciting year with curated programming that will provide practical insights on how to maximize your patent term...more
Recent guidance published in the Federal Register by the United States Patent and Trademark Office (USPTO) explains some of what is required by patent examiners in making an obviousness case under 35 U.S.C. § 103. Since it is...more
On February 13, the USPTO issued inventorship guidance for AI-assisted innovations. The guidance, effective as of February 13, 2024, emphasizes that AI-assisted inventions are not categorically unpatentable and the...more
The US Court of Appeals for the Federal Circuit affirmed in part and vacated in part a Patent Trial & Appeal Board finding that the claims at issue were either invalid under 35 U.S.C. §112 as unsupported by written...more
In Elekta Limited v. Zap Surgical Systems, Inc., No. 21-1985 (Fed. Cir. Sept. 21, 2023), the case addresses the interplay between findings related to motivation to combine and reasonable expectation of success in determining...more
Penumbra, Inc. v. Rapidpulse, Inc., IPR2021-01466, Paper 34 (P.T.A.B. March 10, 2023) In a PTAB decision that was recently designated precedential, the Board made two important decisions concerning provisional patent...more
Baxalta Inc. v. Genentech, Inc., Appeal No. 22-1461 (Fed. Cir. Sept. 20, 2023) Our Case of the Week focuses on the enablement requirement. It’s the first case to come before the Federal Circuit following the Supreme...more
The Federal Circuit decided a question left open during a recent spate of opinions involving the judicially created doctrine of obviousness-type double patenting (ODP): the effect patent term adjustment (PTA) can (or should)...more
On August 22, 2023, the Federal Circuit affirmed an IPR Final Written Decision holding claims to deuterated derivatives of ruxolitinib unpatentable as obvious and rejected the patentee’s argument that a skilled artisan would...more
This case addresses obviousness under 35 U.S.C. § 103 in relation to a method of increasing prostacyclin release to reduce hypertension in a patient. In particular, this case discusses issues relating to motivation to...more