News & Analysis as of

Patents Motivation to Combine Intellectual Property Protection

McDermott Will & Emery

Inventor’s Motivation to Combine Does Not Control Obviousness

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a district court decision rejecting claims of a patent application directed to a dosing regimen for a cancer treatment, finding the claims to be obvious where the...more

McDermott Will & Emery

Bit Swap: Motivation to Modify Prior Art Needn’t Be Inventor’s Motivation

McDermott Will & Emery on

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

Sheppard Mullin Richter & Hampton LLP

Conclusory Assertions Won’t Cut It: Federal Circuit Provides Further Insight into the Motivation to Combine Analysis

In Virtek Visions international ULC v. Assembly Guidance Systems, Inc., DBA Aligned Vision Nos. 2022-1998, 2022-2022 (Fed Cir. Mar. 27, 2024), the Federal Circuit reviewed the Patent Trial and Appeal Board’s findings...more

McDermott Will & Emery

Is Evidence of All Claimed Elements in Prior Art Enough? Not Without Motivation to Combine

The US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board obviousness decision, finding that disclosure in the prior art of all recited claim elements across multiple references, without more,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Elekta Limited v. Zap Surgical Systems, Inc. 81 F.4th...

Zap filed an IPR petition alleging obviousness of a patent owned by Elekta. The petition relied on a combination of two references. The Board found a reason to combine the references and ultimately found obviousness of the...more

McDermott Will & Emery

A Matter of Style: No Need to Select “Primary” Reference in Obviousness Challenge

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed an obviousness decision by the Patent Trial & Appeal Board, explaining that nothing requires a petitioner to identify a prior art reference as a “primary reference” in...more

Knobbe Martens

Prosecution History May Support a Motivation to Combine

Knobbe Martens on

Elekta Limited v. Zap Surgical Systems, Inc. Before: Reyna, Stoll, and Stark. Appeal from the Patent Trial and Appeal Board. Summary: Patentee’s failure during prosecution to distinguish relevant art provided support...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

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