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USPTO not bound by district court claim construction on reexamination; obviousness affirmed

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 […]

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Another patent invalid after KSR, with help from an innovative online litigation strategy

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 […]

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Summary of proposed final KSR examining guidelines surfaces

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 […]

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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 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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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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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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