Filewrapper

Prior art disclosure of compound does not anticipate substantially separated enantiomer

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 […]

Continue Reading →

Failure to raise KSR post-trial but pre-judgment results in waiver

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, […]

Continue Reading →

Scope of prior art teachings incorrect; summary judgment of obviousness reversed

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 […]

Continue Reading →

Federal Circuit hears arguments in In re Kubin; what will be obvious in biotechnology?

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 […]

Continue Reading →

Substantial question regarding validity insufficient to defeat likelihood of success?

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 […]

Continue Reading →

Federal Circuit declines to consider constitutionality of BPAI judge appointments, affirms rejection

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 […]

Continue Reading →

BPAI: 102(e) art can be effective prior art as of provisional priority date

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 […]

Continue Reading →

Jury’s pre-KSR nonobviousness verdict reversed post-KSR

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 […]

Continue Reading →

Anticipation no longer the epitome of obviousness? Claims can be anticipated but nonobvious

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 […]

Continue Reading →

When factual inquiries underlying obviousness determination disputed, summary judgment improper

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 […]

Continue Reading →

Stay in Touch

Receive the latest news and updates from us and our attorneys.

Sign Up