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Federal Circuit clarifies the “teaches away” doctrine and the “substantial evidence” requirement when making an obviousness determination

By Joseph M. Hallman

On July 22, 2021, in Chemours Company FC, LLC v. Daikin Industries, Ltd. (“Chemours v. Daikin”), the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) reversed a decision made by the Patent Trial and Appeal Board (“PTAB”). In two inter partes reviews (“IPRs”) filed by Daikin Industries, Ltd. (“Daikin”), the PTAB held […]

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Federal Circuit reiterates the principle that when a § 103 rejection is based on a single prior art reference, the reference must be self-enabling in order to render the claimed invention obvious

By Joseph M. Hallman

On April 16, 2021, in Raytheon Technologies Corp. v. General Electric Co., the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) reversed a decision by the Patent Trial and Appeal Board (“PTAB”) regarding unpatentability due to obviousness under 35 U.S.C. § 103. In its decision, the Federal Circuit made clear that when […]

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Federal Circuit Reinstates Patent Claims Previously Found Obvious by Patent Trial and Appeal Board

By Julie L. Spieker

On July 31, 2020, in the precedential opinion Alacritech, Inc. v. Intel Corp., the United States Court of Appeals for the Federal Circuit (hereinafter the “Federal Circuit”) reinstated three claims of Alacritech’s patent, holding that the Patent Trial and Appeal Board (hereinafter the “Board”) did not adequately support its finding that the asserted prior art […]

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Non-obviousness: when failure equals success

A recent Federal Circuit Court decision demonstrates that evidence of prior failures to achieve desired results can be potent evidence of lack of predictability in a field, resulting in the non-obviousness of using a compound to treat a specific cancer, even though the drug target was identified as effective in a test tube. The decision, […]

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Meet DABUS: An Artificial Intelligence Machine Hoping to Maintain Two Patent Applications in its own Name

By Blog Staff

Three 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 for attracting […]

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First Cannabis-Related Patent Makes its Way through the Federal Courts: What it Teaches, and What it Does Not

By Blog Staff

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 District […]

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CRISPR: Broad Institute Holds onto its Piece of Pie, and it’s Delicious!

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 […]

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PTAB to Consider When Conference Materials are Prior Art

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 […]

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USPTO Director Andrei Lancu Takes a Look at Early Prosecution

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 […]

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Federal Circuit Emphasizes “Why” is Important Part of Obviousness Rationales in Chemical Patent Cases

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 […]

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