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Federal Circuit: Analogous art test survives KSR, but obviousness affirmed

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 […]

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KSR in litigation: Summary judgment of obviousness granted post-KSR after denial pre-KSR

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 […]

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Ex parte Catan: Obviousness at the USPTO in electrical engineering

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 […]

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Ex parte Kubin: Obviousness at the USPTO in biotechnology

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 […]

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Ex parte Smith: Obviousness at the USPTO in mechanical engineering

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 […]

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Board of Patent Appeals and Interferences releases three precedential obviousness decisions

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, […]

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Determination of level of ordinary skill in the art erroneous, leads to finding of obviousness

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 […]

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Verifying what was already suspected to be the case “does not give rise to a patentable invention”

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 […]

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Federal Circuit: test for obviousness of structurally similar compounds is unchanged post-KSR

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 […]

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Post-KSR: Expert testimony enough for infringer to avoid summary judgment of no invalidity?

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 […]

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