Filewrapper®

Category: Obviousness


Meet DABUS: An Artificial Intelligence Machine Hoping to Maintain Two Patent Applications in its own Name
August 22, 2019
Post by Tina G. Yin Sowatzke, Pharm.D.
Tina G Yin-SowatzkeThree patent offices face questions stemming from the growing implications of artificial intelligence (AI) disrupting the intellectual property legal framework. The United States Patent Office (USPTO), European Patent Office (EPO), and United Kingdom Intellectual Property Office (UKIPO) recently received two patent application filings directed to a beverage container and a flashing device used .......
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First Cannabis-Related Patent Makes its Way through the Federal Courts: What it Teaches, and What it Does Not
May 02, 2019
Post by Tina G. Yin Sowatzke, Pharm.D.
Tina G Yin-Sowatzke In the past 25 years, there has been substantial growth surrounding the developments within the cannabis industry, particularly involving intellectual property protections. With legalization of cannabis gaining traction across the United States, any court guidance can provide a foundation for those seeking patent protection. Opportunely, on April 17, 2019, The District Court for the Di.......
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CRISPR: Broad Institute Holds onto its Piece of Pie, and it’s Delicious!
September 13, 2018
Post by Oliver P. Couture, Ph.D.
On Monday, September 10th, the Court of Appeals for the Federal Circuit (CAFC) upheld the decision from the Patent Trial and Appeal Board (PTAB) on the interference between the Broad Institute and the University of California. The PTAB held, and the CAFC upheld, that given the difference between prokaryotic and eukaryotic cells, one skilled in the art would not have had a reasonable expectation of succes.......
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PTAB to Consider When Conference Materials are Prior Art
June 11, 2018
Post by Blog Staff
In a consolidated appeal from two related Patent Trial and Appeals Board (“PTAB”) decisions, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed-in-part and vacated-in-part the PTAB’s findings. The CAFC affirmed the PTAB’s conclusion that challenged claims would not have been obvious over two specific references. However, the CAFC vacated the PTAB’s determination that certain other references .......
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USPTO Director Andrei Lancu Takes a Look at Early Prosecution
May 24, 2018
Post by Oliver P. Couture, Ph.D.
This week, the USPTO Director, Andrei Iancu, testified before the House Judiciary Committee. In his written statement Director Iancu wrote on topics related to early prosecution that would result in lower costs to clients and would speed up the process of obtaining a patent. A new pilot program that will allow for a pre-search Examiner interview is being planned. The goal of the interview is to allow claim i.......
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Federal Circuit Emphasizes “Why” is Important Part of Obviousness Rationales in Chemical Patent Cases
September 21, 2017
Post by Jonathan L. Kennedy
In a recent decision by the Federal Circuit Court of Appeals, In re Stepan Company, the Federal Circuit reversed the Patent Trial and Appeal Board decision to affirm an examiner’s rejection that claims were obvious.  The claims in the application were directed to ultra-high load, aqueous glyphosate salt-containing concentrates comprising water, a glyphosate salt in an aqueous solution, a surfact.......
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When Life Hands you Lemons, Make CoQ10
July 27, 2017
Post by Blog Staff
In the Federal Circuit Decision of Soft Gel Technologies, Inc. v. Jarrow Formulas, Inc., the Court found three related Soft-Gel patents invalid for obviousness. The three patents describe a way to dissolve CoQ10 in monoterpenes for enhanced delivery to the body. The patents disclosed two suitable examples, limonene and carvone and derivatives thereof. However, prior to suit, the Patent Trial and Appeal B.......
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Inevitable Does Not Equal Obvious
July 21, 2017
Post by Blog Staff
Earlier this week, the Unites States Court of Appeals for the Federal Circuit (“CAFC”) held that the United States District Court for the District of Delaware clearly erred in its obviousness analysis in Millennium Pharmaceuticals, Inc. v. Sandoz, Inc, reversing the lower court’s decision and entering judgment in favor of Millennium. Millennium Pharmaceuticals, Inc. (“Millennium”) sued the defendants und.......
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Federal Circuit Reverses PTAB Obviousness Decision for the Board's Failure to Adequately Articulate an Obviousness Rationale
May 25, 2016
Post by Jonathan L. Kennedy
In Black & Decker, Inc. v. Positec USA, Inc., a non-precedential opinion, the Federal Circuit reversed the Patent and Trial Appeal Board's (PTAB) finding of obviousness of two claims.  The appeal arose from an Inter Partes Review (IPR) of U.S. Patent No. 5,544,417 owned by Black & Decker directed to a string trimmer.  The PTAB had instituted the IPR on two appara.......
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The Continuing Saga of the First IPR at the Federal Circuit
July 09, 2015
Post by Blog Staff
    The Federal Circuit has simultaneously issued an order and an opinion in In re Cuozzo Speed Technologies, LLC, previously discussed on Filewrapper® as being the first appeal arising from an inter partes review ("IPR‚¬) . The order issued by the .......
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Legitimate Advocacy and Genuine Misrepresentation of Material Facts
August 25, 2014
Post by Blog Staff
The Federal Circuit has issued a decision inApotex Inc. v. UCB, Inc., upholding a district court's finding that Apotex's U.S. Patent No. 6,767,556 ("the '556 patent") is unenforceable due to inequitable conduct. Dr. Sherman, founder and chairman of Apotex, wrote the '556 patent application and is its sole inventor. The '556 is based on Canadian application filed on April 5, 2000........
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Federal Circuit Holds Common Sense Cannot Establish Presence of an Element
June 13, 2014
Post by Blog Staff
The Federal Circuit's recent decision in K/S HIMPP v. Hear-Wear Technologies presents an interesting development in the law of obviousness. In affirming a finding of non-obviousness by the PTO Board of Patent Appeals and Interferences ("BPAI"), the Federal Circuit held that while common sense or basic knowledge may provide a reason to combine elements present in the prior art, it cannot establish th.......
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New and Useful - April 23, 2013
April 23, 2013
Post by Blog Staff
· InK-Tech Telecoms v. Time Warner Cable, the Federal Circuit confirmed that the standard for evaluating the adequacy of complaints alleging direct patent infringement remains Form 18 of the Appendix of Forms to the Federal Rules of Civil Procedure ("Form 18"). K-Tech filed separate complaints against Direct TV and Time Warner Cable (“TWC”) on the same day, alleging infringeme.......
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New and Useful - April 10, 2013
April 10, 2013
Post by Blog Staff
· InIn re Hubbell the Federal Circuit confirmed the rejection of all of the pending claims in an application, filed with Jeffrey Hubbell, Jason Schense, Andreas Zisch, and Heike Hall as named inventors. The invention disclosed in the application was based on research performed while all of the named inventors were at California Institute of Technology (CalTech). As a result, the application is assig.......
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Federal Circuit affirms importance of secondary indicia of non-obviousness
April 05, 2013
Post by Blog Staff
The Federal Circuit has recently decided the case ofPower Integrations, Inc. v. Fairchild Semiconductor International, Inc. Power Integrations, Inc. (Power) sued Fairchild Semiconductor International, Inc. (Fairchild) in the U.S. District Court for the District of Delaware, alleging infringement of Power’s four patents covering chargers for mobile phones. In a bifurcated trial, the claims of the patents .......
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New and Useful - April 5, 2013
April 05, 2013
Post by Blog Staff
· In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc. the Federal Circuit clarified several points relating to claim construction, determinations of non-obviousness, and calculation of damages. The court confirmed that claiming a “circuit” in conjunction with a sufficiently definite structure for performing the identified function is adequate to bar means-plus-fu.......
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New and Useful - February 21, 2013
February 21, 2013
Post by Blog Staff
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New and Useful - February 6, 2013
February 06, 2013
Post by Blog Staff
· In Allergan, Inc. v. Barr Labs the Federal Circuit affirmed a decision by the District of Delaware finding that Barr Laboratories, Inc. and Sandoz Inc. had infringed a patent owned by Allergen, Inc., and finding the patent-in-suit valid. Barr and Sandoz each filed abbreviated new drug applications (ANDA) for a generic version of the drug covered by the Allergen patent, and both ANDAs asserted tha.......
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New and Useful - January 31, 2013
January 29, 2013
Post by Blog Staff
· In Soverain Software LLC v. Newegg Inc. the Federal Circuit vacated in part and reversed in part an Eastern District of Texas decision finding Newegg Inc. liable for infringement of U.S. Patent Nos. 5,715,314, 5,909,492, and 7,272,639, all relating to electronic commerce. The Federal Circuit offered clarifying insight on the obviousness doctrine. The background facts are as follows: Soverain Soft.......
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Federal Circuit Addresses Obviousness Rationales and Counterarguments
January 17, 2013
Post by Blog Staff
Recently, the Federal Circuit issued its opinion in CW Zumbiel v. Kappos. The Federal Circuit affirmed the Board of Patent Appeals and Interferences’ (“BPAI”) finding that multiple claims in U.S. Patent No. 6,715,639 (“the ’639 patent”) were obvious and therefore invalid. The ’639 patent is directed to a “carton with an improved dispenser.” The carton is for.......
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New and Useful - Janurary 14, 2013
January 14, 2013
Post by Blog Staff
· The Supreme Court handed down its decision in Already, LLC v. Nike, Inc. The Court held that Nike’s covenant not to sue Alreadyfor alleged infringement of Nike’s AIR FORCE 1 trademark—entered into after Nike had filed suit and Already had filed a counterclaim challenging the mark’s validity—rendered both Nike’s claims and Already’s counterclaims moot. Th.......
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Another Billion Dollar Patent Verdict
January 03, 2013
Post by Blog Staff
Another billion dollar verdict has been handed out in a patent case. Read the verdict in Carnegie Mellon University v. Marvell Technology Group, LTD. here. This latest case continues a string of billion dollar verdicts highlighted by Jonathan Kennedy in the latest edition of MVS Briefs. Carnegie Mellon brought suit alleging infringement of two of its patents, Patent No. 6,201,839 and Patent No. 6,438,180, relat.......
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More on Crocs at the CAFC
February 28, 2010
Post by Blog Staff
Another decision regarding a number of patents relating to foam based footware, this time held by Crocs, Inc. ("Crocs") has been handed down from the Court of Appeals for the Federal Circuit ("CAFC"). In this appeal from the U.S. International Trade Commission ("USITC"), the court addressed obviousness of a utility patent and claim construction of a design patent. This case com.......
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Harmless Error at the Federal Circuit
February 28, 2010
Post by Blog Staff
A recent decision by the Court of Appeals for the Federal Circuit addressed the issue of how much deference should be given to a decision by the Board of Patent Appeals and Interferences when the Board makes an error in ascertaining the teachings of references. The appeal concerns the status of U.S. Patent Application number 09/719,045 which had been rejected as either anticipated by or obvious under one o.......
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Common sense held sufficient to invalidate claims as obvious on summary judgment
December 14, 2009
Post by Blog Staff
If anyone needed further proof that patents are more easily held obvious after KSR, look no further. The Federal Circuit held that a patent directed to a method of email marketing with improved efficiency was obvious based on the "common sense" of one in the art. The claimed method had four steps, the fourth of which was (as described by the court) repeating the first three steps until a minimum thres.......
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Dependent claim can't be obvious when indepdendent claim is not; verdict vacated as inconsistent
October 19, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed-in-part a district court's decision regarding obviousness, holding the defendant was not entitled to summary judgment that the asserted claims were invalid for obviousness. The court vacated the district court's entry of judgment of an inconsistent jury verdict of obviousness: the jury held a dependent claim obvious but the independent claim from which .......
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When compounds in a class have divergent properties, positional isomer not obvious
May 18, 2009
Post by Blog Staff
In a decision Wednesday, the Federal Circuit affirmed a district court's determination that the asserted claims in a pharmaceutical patent were not proven obvious. As is common in pharmaceutical cases, the defendant filed an ANDA asserting the patent covering the compound and its use was invalid, and in the ensuing infringement suit admitted its proposed generic drug met the claim limitations. The district.......
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Use of court-appointed expert not abuse of discretion, even when jury told of neutrality
April 16, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit held it was not an abuse of discretion for a district court to retain an independent expert pursuant to Rule 706 to assist the jury in understanding the technology relating to a complicated electrical patent. The district court was frustrated with the technology, and observed "the notion that a jury is going to understand [the technical details], to me, is foolishne.......
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Kubin decided: Federal Circuit provides guidance for application of KSR in biotechnology
April 03, 2009
Post by Blog Staff
Today the Federal Circuit decided the appeal in In re Kubin, a case dealing with how the Supreme Court's KSR decision will apply in the field of biotechnology. The decision is available here. We previously blogged about the BPAI decision here and the Federal Circuit's oral arguments here. Those posts have detailed descriptions of the facts in the case. The Federal Circuit affirmed the Board's fi.......
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Summary judgment of validity reversed; predictable variation of prior art obvious as a matter of law
March 30, 2009
Post by Blog Staff
In a decision last month, the Federal Circuit reversed a district court's summary judgment to the plaintiff. The district court had awarded damages after granting summary judgment of "validity" and infringement. While the Federal Circuit agreed with the district court's construction of a disputed claim term, the court held the asserted claims were obvious as a matter of law. Specifically, it w.......
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Combining two embodiments in same prior art patent "does not require a leap of inventiveness"
March 30, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit reversed a district court's denial of judgment as a matter of law of obviousness. A jury held the claim at issue was not obvious, and the district court denied the defendant's post-verdict motion for judgment as a matter of law on the issue.While the Federal Circuit affirmed the district court's construction of two disputed claim terms, according to the Feder.......
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Integrating infringing component into larger product does not escape contributory infringement
March 24, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's grant of summary judgment of obviousness, but vacated and remanded the summary judgment of no contributory or inducing infringement of two other patents in suit related to recordable optical disk drive technology. The court relied on copyright cases applying the concept of secondary liability in determining that the district court applied .......
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Patent lawyer without expertise in relevant field cannot testify on infringement, invalidity
March 24, 2009
Post by Blog Staff
The Federal Circuit recently reversed a district court's post-verdict grant of judgment as a matter of law of nonobviousness, applying the KSR obviousness standard and addressing the requirements for expert testimony for legal conclusions of obviousness. The Federal Circuit clearly set forth that patent attorneys without specific skill and training in the area of the technology involved in the patent-in-suit .......
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Supreme Court of Canada tightens obviousness standard
March 23, 2009
Post by Blog Staff
The Supreme Court of Canada recently made significant changes to its obviousness standard for patentability. The case addressed a dispute arising between the brand-name pharmaceutical manufacturer, Sanofi, and the Canadian generic manufacturer, Apotex. The decision by the Supreme Court of Canada brings its obviousness standard closer to the standard recently set forth by the U.S. Supreme Court in KSR v. Teleflex.......
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Prior art disclosure of compound does not anticipate substantially separated enantiomer
March 23, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's determination, after a bench trial, that the asserted claim of a patent had not been proven anticipated or obvious. The district court held that while the prior art showed the chemical structure of the claimed compound, it did not describe the separation of the two enantiomers of the compound, nor did it describe the appropriate salt form .......
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Failure to raise KSR post-trial but pre-judgment results in waiver
March 05, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a jury's verdict of infringement, no obviousness, and no inequitable conduct. On appeal, the defendant for the first time argued the jury's verdict should be reversed in light of KSR. The Federal Circuit held the argument had been waived. The jury reached its verdict on December 8, 2006. Post-trial motions were fully briefed on February 20, 2007, and .......
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Scope of prior art teachings incorrect; summary judgment of obviousness reversed
February 05, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit reversed a district court's summary judgment of obviousness. The patent related to dessicant packages. The district court held a prior art reference taught all limitations of the claims with the exception of the type of absorbent material contained in the package, and that, under KSR, it would be obvious to one of ordinary skill in the art to substitute one material.......
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Federal Circuit hears arguments in In re Kubin; what will be obvious in biotechnology?
January 11, 2009
Post by Blog Staff
Thursday, the Federal Circuit held oral arguments in In re Kubin, a biotechnology case involving a patent over a gene sequence in humans, and specifically whether the claims were obvious. This was the first precedential decision by the Board of Patent Appeals and Interferences on the issue of obviousness in this field after KSR, so how the Federal Circuit comes out on the issue has the potential to greatly affe.......
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Substantial question regarding validity insufficient to defeat likelihood of success?
December 09, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's grant of a preliminary injunction concerning the manufacture of an extended release formulation of an antibiotic. In a lengthy opinion, the Federal Circuit applied the Supreme Court's obvious-to-try logic from KSR to pharmaceutical patents. Notably, the court used the unpredictability of the pharmaceutical arts to find that, despite a.......
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Federal Circuit declines to consider constitutionality of BPAI judge appointments, affirms rejection
November 06, 2008
Post by Blog Staff
In a decision this week, the Federal Circuit decided a case involving both obviousness and the Appointments Clause relating to allegedly unconstitutional appointment of members of the Board of Patent Appeals and Interferences. The court determined that appellants failed to timely raise the issue of the constitutionality of the Appointments Clause by not presenting it to the Board, and therefore waived the issue.......
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BPAI: 102(e) art can be effective prior art as of provisional priority date
October 29, 2008
Post by Blog Staff
In a decision recently designated precedential, the Board of Patent Appeals and Interferences considered the question of whether a reference that is prior art under § 102(e) is prior art as of its provisional priority date or the actual filing date of the reference. In affirming the examiner, the Board determined the reference was prior art as of its provisional date, as long as the relied-upon disclosure .......
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Jury's pre-KSR nonobviousness verdict reversed post-KSR
October 29, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's grant of a judgment as a matter of law that the asserted claims of a patent were obvious after a jury verdict of no obviousness. KSR was decided after the jury's verdict but before the district court ruled on the defendant's motion for judgment as a matter of law.On appeal, the patentee argued the reference that allegedly rendered.......
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Anticipation no longer the epitome of obviousness? Claims can be anticipated but nonobvious
October 16, 2008
Post by Blog Staff
The Federal Circuit recently affirmed a district court's finding of non-willful infringement for one product, reversed its claim construction and related finding of noninfringement of a second product, and vacated its judgment as a matter of law on the issue of anticipation. The district court, at the charge conference near the end of the jury trial in this case, decided not to instruct the jury on anticipati.......
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When factual inquiries underlying obviousness determination disputed, summary judgment improper
September 25, 2008
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a district court's summary judgment of no anticipation, no invalidity for failure to comply with the written description requirement, and infringement, but reversed the district court's summary judgment of no invalidity based on obviousness. In an unusual procedural move, the parties stipulated that for the issues on which both parties moved for summary j.......
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Irreparable harm to exclusive licensee cannot support injunction; willfulness vacated post-Seagate
August 20, 2008
Post by Blog Staff
In a decision Monday, the Federal Circuit addressed a range of issues and ultimately affirmed a district court's denial of injunctive relief and, in light of the intervening Seagate decision, vacated and remanded the case for reconsideration regarding willfulness. The court also affirmed the district court's finding of no invalidity and the infringement of some claims under the doctrine of equivalents. .......
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BPAI: when prior art teaches away, expectation of success cannot support obviousness rejection
August 16, 2008
Post by Blog Staff
In a recent precedential decision by the Board of Patent Appeals and Interferences, the board reversed an Examiner's rejections based on double patenting, anticipation, and obviousness. The Board held the Examiner inappropriately rejected the claims for double patenting because there was insufficient evidence to show the compositions claimed in the prior art possessed the viscosity level claimed in the curren.......
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Federal Circuit provides more post-KSR guidance for obviousness for chemical compounds
July 24, 2008
Post by Blog Staff
In a decision Monday, the Federal Circuit affirmed a district court's decision finding asserted claims of a patent valid and enforceable. Specifically, the court affirmed a finding that the asserted claims were nonobvious as a matter of law, and that the evidence did not support a finding of inequitable conduct. The Federal Circuit, applying KSR Int'l Co. v. Teleflex Inc. in the context of similarly-st.......
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Adaptation of prior art bidding system to the web obvious under KSR and Leapfrog
July 17, 2008
Post by Blog Staff
In a decision Monday, the Federal Circuit reversed a district court's permanent injunction and denial of judgment as a matter of law in a patent infringement case. A jury determined the asserted claims of the patent were not obvious and that the defendant willfully infringed, and awarded $38.5 million in damages, which the district court enhanced to nearly $77 million based on the willful infringement findin.......
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Failure to consider evidence of good faith leads to reversal of inequitable conduct finding
June 25, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed a district court's finding of no infringement and invalidity for obviousness, and reversed the district court's finding of unenforceability due to inequitable conduct.The Federal Circuit, citing KSR, noted that an obviousness analysis can take account the inferences and creative steps that a person of ordinary skill in the art would employ, and held th.......
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Two district courts, one correct claim construction; $103 million damage award vacated
April 25, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit reversed a jury verdict of willful infringement and a total award of over $100 million based on a modified claim construction. The court also reversed the finding that one asserted claim was not anticipated, and remanded the case for a redetermination of infringement and whether the remaining claims were valid.The court considered two competing constructions of the same .......
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Federal Circuit: And can mean or, if it makes the claim make sense
April 08, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed a district court's permanent injunction against a defendant to prevent infringement of a patent. The district court held the patent not invalid and infringed, based in part on a claim construction that construed the word "and" to mean "or." Specifically, based on the specification and other claims, the court determined such a construc.......
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Patent for better mousetrap obvious, secondary indicia could not rebut "strong prima facie case"
March 31, 2008
Post by Blog Staff
In a decision Friday, the Federal Circuit addressed the issue of post-KSR obviousness and fraudulent misrepresentation. Regarding obviousness, the court held that the secondary indicia of nonobviousness simply could not overcome a "textbook case" of claims involving "a combination of familiar elements according to known methods that does no more than yield predictable results." Interpreti.......
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Post-KSR obviousness arguments cast sufficient "doubt" on validity to vacate preliminary injunction
February 20, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit vacated a preliminary injunction entered in the Northern District of Ohio enjoining the selling and copying of a product used to practice a method claimed in a patent. In doing so, the Federal Circuit utilized of the traditional four–factor test for preliminary injunctions and specifically analyzed the first factor, likelihood of success on the merits. The cou.......
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When market entry fee part of damages for patent infringement, permanent injunction inappropriate
January 21, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a finding of infringement of a patent relating to the detection and classification of Hepatitis C Virus, but remanded the case for a determination of anticipation. In arguably the most interesting aspect of the decision, the court vacated the permanent injunction entered against the defendant. The plaintiff asked for and was awarded damages to compensate for th.......
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Pre-KSR obviousness instruction does not result in plain error post-KSR
January 10, 2008
Post by Blog Staff
In a decision this week, the Federal Circuit affirmed findings of infringement of two patents by two defendants. The court also reversed an invalidity ruling of one of one claim that had been the subject of reexamination, but remanded the case to the district court for a determination of the obviousness of one claim based on a revised claim construction and for a determination of damages.While the case went to t.......
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Prior art addressing different problem shows what was "common knowledge," obviousness affirmed
October 15, 2007
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed the rejection of all claims subject to reexamination as obvious. The USPTO had rejected the claims based on a combination of three prior art references.The court provided an expansive discussion of obviousness post-KSR. The court noted that where the Federal circuit had gone wrong in KSR was holding that because a prior art reference did not address the same .......
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USPTO publishes post-KSR obviousness examination guidelines
October 10, 2007
Post by Blog Staff
The USPTO guidelines for obviousness rejections post-KSR appear in today's Federal Register. The full guidelines can be found here, and are similar to the draft guidelines that surfaced some time ago. In a nutshell, examiners will officially have seven rationales upon which an obviousness rejection may rely:Combining prior art elements according to known methods to yield predictable results;Simple substit.......
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Finding of infringement of two patents affirmed, one reversed, damages award vacated
September 27, 2007
Post by Blog Staff
In a highly anticipated recent decision, the Federal Circuit affirmed the judgment of infringement against Vonage with respect to two Verizon patents, holding that the district court did not err in its construction of the disputed claim terms and that the claims were not obvious. With respect to a third patent, the Federal Circuit held the district court improperly construed a disputed claim term and therefore.......
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Federal Circuit makes previous nonprecedential obviousness opinion precedential
September 12, 2007
Post by Blog Staff
Today the Federal Circuit decided to change the status of Daiichi Sankyo Co. v. Apotex, Inc. (previously blogged about here), from nonprecedential to precedential. This is noteworthy because this was one of the first obviousness cases decided by the Federal Circuit after KSR, and dealt specifically with one of the Graham factors: the level of ordinary skill in the art. Click here for our previous summary, and.......
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Purified stereoisomer of compound in known mixture obvious in light of expected potency
September 11, 2007
Post by Blog Staff
In a decision today, the Federal Circuit reversed a district court's pre-KSR decision of nonobviousness. The claims were directed toward a particular isomer of a compound that was "substantially free" of other isomers. The prior art included a mixture that included the claimed isomer as well as a different isomer.The court found the claims obvious because it was known in related compounds that the.......
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Federal Circuit affirms finding of no anticipation or obviousness, no mention of KSR to be found
September 06, 2007
Post by Blog Staff
The Federal Circuit yesterday affirmed a decision by the District Court for the District of Delaware upholding the validity of Reissue Patent 34,712 ("the '712 patent") and the injunction preventing infringement of the '712 patent. Specifically, the court affirmed the district court's decision that the prior art reference relied upon for the defendants' anticipation argument was not ena.......
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Reversible error if BPAI fails to consider rebuttal evidence of nonobviousness
August 29, 2007
Post by Blog Staff
The Federal Circuit today vacated a decision by the Board of Patent Appeals and Interferences affirming an examiner's obviousness rejection. The inventors submitted three declarations evidencing the nonobviousness of their invention (unexpected results and teaching away), but the Board did not consider the evidence, finding that it related only to an intended use of the invention, which was not relevant as.......
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USPTO not bound by district court claim construction on reexamination; obviousness affirmed
August 22, 2007
Post by Blog Staff
The Federal Circuit today addressed claim construction and obviousness in the context of a reexamination appeal. The patentee argued that the USPTO was bound, in reexamination, to apply the claim construction given the patents by a district court when the patents were in litigation before reexamination. The court found that because the USPTO was not a party to that litigation, issue preclusion could not apply,.......
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Another patent invalid after KSR, with help from an innovative online litigation strategy
August 15, 2007
Post by Blog Staff
Peter Zura has an interesting post about a case in the Eastern District of Texas (one of the most popular districts for patent cases to be filed) where a patent was held to be both anticipated and, failing that, obvious in light of KSR. The court also addressed the concept of joint infringement, which the Federal Circuit has yet to address in detail, and found that a showing of agency or concerted action is n.......
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Summary of proposed final KSR examining guidelines surfaces
August 06, 2007
Post by Blog Staff
The Patent Prospector is reporting that the summary of the USPTO's post-KSR obviousness examination guidelines recently sent to OMB has apparently surfaced. Note that this summary is not confirmed, but it comes from a typically reliable source. Either click below or head over to the Patent Prospector to read the summary.Update (11:15): another source has confirmed the accuracy of the summary.Further .......
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Federal Circuit: Analogous art test survives KSR, but obviousness affirmed
August 02, 2007
Post by Blog Staff
In a case decided yesterday, the Federal Circuit affirmed a decision by the BPAI finally rejecting all but one claim of a patent under reexamination as obvious. The patentee admitted that all elements of the claims save one were present in two relevant prior art references and that another reference disclosed the final element, but argued that the third reference was nonanalogous art, and therefore the finding.......
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KSR in litigation: Summary judgment of obviousness granted post-KSR after denial pre-KSR
July 31, 2007
Post by Blog Staff
The Wall Street Journal today is reporting about a patent infringement case in the Northern District of California that is believed to be the first instance where a district court has changed its opinion regarding the validity of a patent as a result of KSR. The court found two principles from KSR to "guide" the obviousness analysis:First, "[w]hen a patent 'simply arranges old elements with .......
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Ex parte Catan: Obviousness at the USPTO in electrical engineering
July 19, 2007
Post by Blog Staff
In its third opinion of the day designated precedential, the Board of Patent Appeals and Interferences once again affirmed an examiner's obviousness rejections. Specifically, the Board found that Appellant's apparatus incorporating bioauthentication and a consumer electronics device was an obvious solution to a known problem, as all elements of the claims other than the bioauthentication device were foun.......
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Ex parte Smith: Obviousness at the USPTO in mechanical engineering
July 18, 2007
Post by Blog Staff
In another post-KSR opinion designated precedential today, the Board of Patent Appeals and Interferences affirmed an Examiner's final rejection of an application under 35 U.S.C. §§ 102 and 103. The claims "were combinations which only unite old elements with no change in their respective functions and which yield predictable results," and were thus found to be obvious post-KSR.More det.......
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Ex parte Kubin: Obviousness at the USPTO in biotechnology
July 18, 2007
Post by Blog Staff
As mentioned previously, the BPAI designated an opinion as precedential today addressing the issues of obviousness, enablement, and the written description requirement in the context of biotechnology inventions. These issues were addressed in the context of patenting a gene involved in regulating the immune system. Addressing the obviousness issue, the board determined that the previous knowledge of the protei.......
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Board of Patent Appeals and Interferences releases three precedential obviousness decisions
July 18, 2007
Post by Blog Staff
Today the USPTO Board of Patent Appeals and Interferences designated as precedential three opinions in ex parte appeals from examiner rejections applying the post-KSR obviousness standard. The three cases are each from a different technology center. The cases are:Ex parte Kubin (Tech center 1600—Biotechnology and Organic Chemistry)Ex parte Smith (Tech center 3700—Mechanical Engineering, Manufactu.......
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Determination of level of ordinary skill in the art erroneous, leads to finding of obviousness
July 11, 2007
Post by Blog Staff
In a nonprecedential ruling today, the Federal Circuit held that the district court incorrectly determined the level of ordinary skill in the art, and that when the level of skill was determined correctly, the invention was obvious based on a prior art reference that was directed toward those having greater skill than the district court determined. The patented invention related to the use of gyrase inhibitors.......
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Verifying what was already suspected to be the case "does not give rise to a patentable invention"
July 10, 2007
Post by Blog Staff
The Federal Circuit yesterday issued a split opinion dealing with contributory infringement and post-KSR obviousness. The case involved two patents regarding hematopoietic stem cells collected from blood in the umbilical cord after the birth of a child. Such cells have shown promise in the treatment of blood-related disorders. The Federal Circuit held that the patents were obvious because the inventor'.......
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Federal Circuit: test for obviousness of structurally similar compounds is unchanged post-KSR
June 29, 2007
Post by Blog Staff
At the Federal Circuit, it appears that everything old is new again. In a case applying the new obviousness framework from KSR to structurally similar chemical compounds, the court affirmed a district court decision that claimed compounds would not have been obvious in light of the prior art. The court lauded the district court's "extensive findings of fact and conclusions of law as to the four Graham .......
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Post-KSR: Expert testimony enough for infringer to avoid summary judgment of no invalidity?
June 19, 2007
Post by Blog Staff
In a nonprecedential ruling yesterday, the Federal Circuit reversed a district court's grant of summary judgment of no obviousness. The twist was that the only evidence in the record cited by the court as demonstrating a genuine issue of material fact was the testimony of the defendant's expert witness that there would have been a reason to modify the prior art in order to produce the claimed invention. .......
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KSR at the USPTO: sea change?
May 29, 2007
Post by Blog Staff
Over at The Fire of Genius, Joe Miller of Lewis & Clark Law School has compiled a list of cases citing KSR. As of today, there are 2 Federal Circuit decisions (blogged about here and here), 2 district court decisions [Update (6/2) there is now a third], and a whopping 31 Board of Patent Appeals and Interferences decisions [Update (6/2) there are now 45 Board decisions] citing KSR. According to Miller:The.......
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Australia's High Court weighs in on obviousness
May 25, 2007
Post by Blog Staff
There is a good post over at the Patent Prospector about a decision by the High Court of Australia (the equivalent to the U.S. Supreme Court) regarding the issue of obviousness in patent law. One notable passage:as a basic premise, obviousness and inventiveness are antitheses and the question is always "is the step taken over the prior art an 'obvious step' or 'an inventive step'"?.......
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Federal Circuit post-KSR: Combination of familiar elements obvious when yielding predictable results
May 10, 2007
Post by Blog Staff
In this matter before the Federal Circuit, the Court affirmed the district court's grant of judgment that Fisher-Price's PowerTouch device did not infringe claim 25 of LeapFrog's U.S. Patent 5,813,861 ("the '861 patent") and that claim 25 of the '861 patent was invalid as obvious. Notably, the court cited the Supreme Court's KSR decision for the first time in a precedential.......
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USPTO issues memo detailing preliminary obviousness instructions in light of KSR
May 03, 2007
Post by Blog Staff
As reported on Patently-O, the USPTO has issued a memo to the technology center directors regarding examination of applications in light of KSR. The good news is that the USPTO seems to have taken to heart the statement in the KSR opinion that "[t]o facilitate review, [the obviousness] analysis should be explicit."More details after the jump.First, the memo reaffirms the importance of the Graham fact.......
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Federal Circuit cites KSR, but not for the new obviousness standard
May 03, 2007
Post by Blog Staff
In a nonprecedential opinion released today, the Federal Circuit cited the Supreme Court's Monday decision in KSR for the first time. Unfortunately for inventors and practitioners looking for guidance under the new standard for obviousness laid out in KSR, the reference had nothing to do with the obviousness standard, just that obviousness is a question of law based on underlying factual information.More .......
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Initial thoughts on KSR v. Teleflex
April 30, 2007
Post by Blog Staff
After an initial reading of the opinion in KSR Int'l Co. v. Teleflex Inc., several issues jump out.There are four (4) reasons why the Federal Circuit's TSM test is no longer the exclusive test for obviousnessWhile the Court noted that the Federal Circuit's "teaching-suggestion-motivation" (TSM) test was not necessarily inconsistent with cases such as Graham, the Court provided four different.......
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Today's opinions in KSR v. Teleflex and Microsoft v. AT&T
April 30, 2007
Post by Blog Staff
Click here for the opinion in KSR v. Teleflex.Click here for the opinion in Microsoft v. AT&T.More to come once we've had a chance to review the decisions. ....
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Supreme Court reverses both KSR and Microsoft
April 30, 2007
Post by Blog Staff
As reported at SCOTUS Blog, the Supreme Court has today ruled in two cases, reversing decisions of the Federal Circuit.The first came in KSR v. Teleflex, where the Court has apparently ruled 9-0 that the Federal Circuit's view on obviousness is too narrow, reversing the decision that Teleflex's invention was nonobvious. Previous coverage of this case can be found here (preview), here (oral argument), a.......
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Federal Circuit panel splits on inherency case
April 24, 2007
Post by Blog Staff
In a second appeal involving patents relating to the original "Purple Pill®," a panel of the Federal Circuit split on whether an earlier patent application by a Korean company inherently anticipated one of AstraZeneca's patents covering the popular heartburn medication Prilosec® (omeprazole). The panel majority held that a process disclosed in a Korean patent application by Chong Kun Dan C.......
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Obviousness: A Primer by the Federal Circuit
March 22, 2007
Post by Blog Staff
In a case before the Federal Circuit, the district court's holding that a patent was valid and enforceable was rejected, not only because the Federal Circuit found the holding incorrect, but also because the holding reflected a serious misconception regarding the proper burden of proof each party bears in patent litigation. The Federal Circuit set forth a primer for an obviousness analysis in rejecting the .......
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Dippin' Dots: brought to you by inequitable conduct, but not an antitrust violation
February 09, 2007
Post by Blog Staff
What do Dippin' Dots, the little beads of ice cream sold at fairs, stadiums, and malls, have to do with patent and antitrust law? For the Federal Circuit, they presented the "close case" where a patent holder can be found to have engaged in inequitable conduct during prosecution of the patent but is not liable for a Walker Process antitrust claim by an infringement defendant. This is possib.......
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Working until the end of the year, Federal Circuit addresses a Law School Exam Type Case
December 26, 2006
Post by Blog Staff
The Federal Circuit affirmed a Southern District of Indiana decision that generic drug makers IVAX Pharmaceuticals, Inc, Dr. Reddy's Labratories, Ltd. (DRL) and Teva Pharmaceuticals USA, Inc. infringed Eli Lilly and Company's (Lilly) U.S. Patent no. 5,229,382. The '382 Patent claims chemical compound olanzapine and the use of the compound to treat schizophrenia. The infringers attempted to show that the '382 was.......
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Roundup of media coverage of "KSR v. Teleflex"
December 04, 2006
Post by Blog Staff
After last week's arguments before the Supreme Court in KSR v. Teleflex, the media has begun to offer its perspective on the case. Below is a sampling of the media coverage, which generally appears to think that the teaching-suggestion-motivation (TSM) test will either be scrapped entirely, or at least allow other ways to prove an invention is obvious, and therefore not patentable.New York TimesUSA TodayLos Angel.......
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Supreme Court questions Federal Circuit's obviousness test: is it "gobbledygook"?
November 29, 2006
Post by Blog Staff
In oral argument before the Supreme Court in KSR International Co. v. Teleflex, Inc., several Justices appeared uncomfortable with the Federal Circuit's "teaching-suggestion-motivation" (TSM) test for obviousness. Justice Scalia, in his typical direct style, characterized the TSM test at various times as "gobbledygook," "irrational," and "meaningless." Other Justices, .......
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Supreme Court to hear key obviousness case today
November 28, 2006
Post by Blog Staff
This morning the Supreme Court will hear oral arguments in KSR International Co. v. Teleflex, Inc., a potentially landmark case on the issue of obviousness in patent law. The case deals with adjustable automotive pedals in vehicles with electronic throttle controls. Teleflex sued KSR for infringement of patent no. 6,237,565. KSR asserted that the '565 patent was obvious, and the district court agreed, granting .......
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Two patents held obvious, "no question" that motivation to combine references existed
November 16, 2006
Post by Blog Staff
Optivus Technology sued Ion Beam Applications (IBA) for infringing its patents relating to the use of proton beams in cancer therapy, and specifically to proton beam therapy facilities with multiple treatment rooms using the same proton source. In addition to patent infringement, Optivus also claimed violations of California and Florida unfair competition laws and a Lanham Act "false statement" claim. The distri.......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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