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 […]

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 […]

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 […]

When Life Hands you Lemons, Make CoQ10

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 […]

Netlist v. Diablo Continues

    On July 25, 2017, the Federal Circuit released a nonprecedential opinion vacating the Board’s decisions and remanding for further proceedings because of erroneous construction of certain language. The Board had previously deemed claims 15-17, 22, 24, 26 and 31-33 of U.S. Patent No. 7,881,150 and claims 1, 16, 17, 24 and 30-31 of U.S. […]

Inevitable Does Not Equal Obvious

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”) […]

Federal Circuit Reverses PTAB Obviousness Decision for the Board’s Failure to Adequately Articulate an Obviousness Rationale

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 […]

The Continuing Saga of the First IPR at the Federal Circuit

    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 Federal Circuit is a denial of the Petition for En Banc Rehearing to consider […]

Legitimate Advocacy and Genuine Misrepresentation of Material Facts

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 […]

Federal Circuit Holds Common Sense Cannot Establish Presence of an Element

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 […]