News & Analysis as of

POSITA Prior Art

McDermott Will & Emery

Back to the Future: Expert Can Be Skilled Artisan Based on Later-Acquired Knowledge

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit clarified that a technical expert does not need to have been a person of ordinary skill in the art (POSITA) at the time of the invention. Instead, they may rely on...more

Akin Gump Strauss Hauer & Feld LLP

District Court Precludes Experienced Patent Attorney from Testifying as Expert Based on Lack of Pertinent Technical Expertise

A district court recently precluded a patent attorney from testifying as an expert in a patent infringement lawsuit where the proposed expert lacked the requisite technical expertise to assist the trier of fact in...more

McDermott Will & Emery

Optimizing Obviousness: Routine Optimization Can Fill in Prior Art Gaps

McDermott Will & Emery on

In an appeal from a Patent Trial & Appeal Board finding of invalidity, the US Court of Appeals for the Federal Circuit held that the result-effective variable doctrine can apply even when there is no overlap between a claimed...more

AEON Law

Patent Poetry: Just Because It’s on the Internet Doesn’t Mean It’s “Publicly Accessible”

AEON Law on

The Patent Trial and Appeal Board (PTAB or Board) has denied institution of a petition for inter partes review (IPR) because the petitioner failed to show that its primary asserted prior reference, available through the...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Rules on Written Description Requirement and Prior Art Statements Supporting a Motivation to Combine

RAI Strategic Holdings, Inc. v. Phillip Morris Products S.A., No. 2022-1862 (Fed. Cir. February 9, 2024) addressed two issues: (1) when the written description requirement is met in the context of a claimed range that is...more

Jones Day

PTAB Doubles Down on Interference Estoppel Issue

Jones Day on

The Patent Trial and Appeal Board held all challenged claims of IGT’s patent unpatentable as obvious over two prior art patents. Zynga Inc. v. IGT, IPR2022-00199-32. In doing so, the PTAB further held that, contrary to...more

McDonnell Boehnen Hulbert & Berghoff LLP

Am I sunk? Where are all the safe harbors against the “on sale” bar?

In part 1 of this series, I introduced the “on sale bar” and described how a commercial sale or offer for sale can negate patentability, according to the doctrine the Supreme Court established in Pfaff v. Wells Elecs., Inc....more

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (March 13 – March 17): A reminder that motivation doesn’t need to be found in the prior art...

The Court had a busy week as the weather begins to turn, and those with school-aged kids begin to plan for spring break. This week we look at the Court’s latest reminder that obviousness is a flexible analysis, so below we...more

Manatt, Phelps & Phillips, LLP

Error in Prior Art Did Not Render Invention Obvious

In LG Electronics Inc. v. Immervision, Inc., the Federal Circuit held that an obvious error in a prior art reference was not considered a teaching. The court explained that a person of ordinary skill in the art (POSITA) would...more

Haug Partners LLP

Mylan Failed to “Immediately Envisage” the Compounds in Merck’s Patent Covering Januvia

Haug Partners LLP on

In Mylan Pharm. Inc. v. Merck Sharp & Dohme Corp., the Federal Circuit considered whether prior disclosure of a genus of compounds and their pharmaceutically acceptable salts was sufficient to anticipate, under 35 U.S.C....more

AEON Law

Patent Poetry: Typo Can’t Be Used to Prove Obviousness

AEON Law on

The Federal Circuit has held that a transcription error in a prior art document wouldn’t have been relied on by a person of ordinary skill in the art (POSITA) and thus couldn’t be used to prove obviousness....more

Haug Partners LLP

Ethicon’s Surgical Stapler Patent Held Invalid by the Federal Circuit

Haug Partners LLP on

In Ethicon LLC v. Intuitive Surgical, Inc., the Court of Appeals for the Federal Circuit (“CAFC”) upheld a finding from the Patent Trial and Appeal Board (“Board”) the claims of Ethicon’s patent directed to a surgical stapler...more

Haug Partners LLP

No Clear Error to Find Lack of Written Description for a Method of Treatment Patent Despite Separate Disclosures of the Drug,...

Haug Partners LLP on

Biogen International GMBH, Biogen MA, Inc., v. Mylan Pharmaceuticals Inc. marks the Federal Circuit’s most recent interpretation of the 35 U.S.C. § 112 written description requirement in the Hatch-Waxman context. No....more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (November 1-5): Killing Bacteria with Light – An Unexpected Result?

Last week saw recently confirmed Judge Cunningham sitting for her first oral arguments (alongside her former boss, Judge Dyk). But we’ll have to wait a bit longer for her first authored opinion. Below we provide our usual...more

Mintz - Intellectual Property Viewpoints

PTAB Continues Streak of IPR Denials

US Patent Trial and Appeal Board (PTAB) institution denials for inter partes review (“IPR”) and other post-grant review petitions have steadily risen from 13 percent in 2012 to 44 percent in 2020. In 2020, the institution...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (March 29-April 2): A POSA By Any Other Name …

In a slow week, the Federal Circuit nevertheless gave patent litigators everywhere a non-precedential opinion to nibble on about the definition of the ever-present person having ordinary skill in the art.  Below we provide...more

Knobbe Martens

Federal Circuit Review - November 2020

Knobbe Martens on

No Shortcuts to the “Reasonable Pertinence” Analysis in the Analogous Art Inquiry - In Donner Technology, LLC v. Pro Stage Gear, LLC, Appeal No. 20-1104, the Federal Circuit determination as to whether a reference is...more

Rothwell, Figg, Ernst & Manbeck, P.C.

The Federal Circuit Issues Decision Clarifying the Qualifying Test for Analogous Art

On November 9, 2020, the Federal Circuit vacated and remanded a decision by the United States Patent Office Patent Trial and Appeal Board (“PTAB”) in Donner Tech., LLC v. Pro Stage Gear, LLC, holding that the PTAB applied an...more

Foley & Lardner LLP

4 Takeaways of USPTO Analysis of AI on IP

Foley & Lardner LLP on

The United States Patent and Trademark Office (USPTO) published a report digesting the feedback it received concerning issues of patent policy for artificial intelligence (AI) technologies. The report, “Public Views on...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (November 9-13): Analyzing Analogous Art

Last week, the Federal Circuit was relatively busy, issuing five precedential opinions and three other written decisions.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection...more

Mintz - Intellectual Property Viewpoints

Tip #5 for Avoiding IPR Institution: Policing KSR’s motivation requirement for the ‘how’ and ‘why’.

Building on Tip #4, one effective way to avoid institution and not address facts is to point out shortcomings in the petition's application of KSR when asserting motivation to combine for an obviousness analysis. The Patent...more

Knobbe Martens

No Shortcuts to the “Reasonable Pertinence” Analysis in the Analogous Art Inquiry

Knobbe Martens on

DONNER TECHNOLOGY, LLC v. PRO STAGE GEAR, LLC - Before Prost, Dyk, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: A determination as to whether a reference is analogous art to a claimed invention...more

Jones Day

Black Box Structure Insufficient for MPF Element

Jones Day on

In Samsung Elecs Co., Ltd., et al. v. Cellect, LLC, IPR2020-00474, Paper 14 (P.T.A.B. Aug. 17, 2020), the PTAB denied institution of U.S. Patent No. 6,982,740 (“the '740 patent”), finding that the specification did not...more

Knobbe Martens

Finite Methods as a Ground for Obviousness

Knobbe Martens on

UBER TECHNOLOGIES, INC. v. X ONE, INC. Before Prost, Dyk, and Wallach. Appeal from the U.S. Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Because a mapping technique must be performed on either a...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: PTAB May Not Institute on Grounds Left out of IPR Petition

The Federal Circuit recently addressed whether the Patent Trial and Appeal Board (PTAB) can institute inter partes review (IPR) on a ground not advanced by the petitioner, as well as whether the general knowledge of a person...more

36 Results
 / 
View per page
Page: of 2

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide