Filewrapper

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In a nonprecedential ruling yesterday, the Federal Circuit reversed a district court's grant of summary judgment of no obviousness.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 […]

Continue Reading →

KSR at the USPTO: sea change?

Over at The Fire of Genius, Joe Miller of Lewis & Clark Law School has compiled a list of cases citing KSR. As of today, there are 2 Federal Circuit decisions (blogged about here and here), 2 district court decisions [Update (6/2) there is now a third], and a whopping 31 Board of Patent Appeals […]

Continue Reading →

Australia’s High Court weighs in on obviousness

There is a good post over at the Patent Prospector about a decision by the High Court of Australia (the equivalent to the U.S. Supreme Court) regarding the issue of obviousness in patent law. One notable passage: as a basic premise, obviousness and inventiveness are antitheses and the question is always "is the step taken […]

Continue Reading →

Federal Circuit post-KSR: Combination of familiar elements obvious when yielding predictable results

In this matter before the Federal Circuit, the Court affirmed the district court's grant of judgment that Fisher-Price's PowerTouch device did not infringe claim 25 of LeapFrog's U.S. Patent 5,813,861 ("the '861 patent") and that claim 25 of the '861 patent was invalid as obvious. Notably, the court cited the Supreme Court's KSR decision for […]

Continue Reading →

USPTO issues memo detailing preliminary obviousness instructions in light of KSR

As reported on Patently-O, the USPTO has issued a memo to the technology center directors regarding examination of applications in light of KSR. The good news is that the USPTO seems to have taken to heart the statement in the KSR opinion that "[t]o facilitate review, [the obviousness] analysis should be explicit." More details after […]

Continue Reading →

Federal Circuit cites KSR, but not for the new obviousness standard

In a nonprecedential opinion released today, the Federal Circuit cited the Supreme Court's Monday decision in KSR for the first time. Unfortunately for inventors and practitioners looking for guidance under the new standard for obviousness laid out in KSR, the reference had nothing to do with the obviousness standard, just that obviousness is a question […]

Continue Reading →

Supreme Court reverses both KSR and Microsoft

As reported at SCOTUS Blog, the Supreme Court has today ruled in two cases, reversing decisions of the Federal Circuit. The first came in KSR v. Teleflex, where the Court has apparently ruled 9-0 that the Federal Circuit's view on obviousness is too narrow, reversing the decision that Teleflex's invention was nonobvious. Previous coverage of […]

Continue Reading →

Today’s opinions in KSR v. Teleflex and Microsoft v. AT&T

Click here for the opinion in KSR v. Teleflex. Click here for the opinion in Microsoft v. AT&T. More to come once we've had a chance to review the decisions.

Continue Reading →

Initial thoughts on KSR v. Teleflex

After an initial reading of the opinion in KSR Int'l Co. v. Teleflex Inc., several issues jump out. There are four (4) reasons why the Federal Circuit's TSM test is no longer the exclusive test for obviousness While the Court noted that the Federal Circuit's "teaching-suggestion-motivation" (TSM) test was not necessarily inconsistent with cases such […]

Continue Reading →

Federal Circuit panel splits on inherency case

In a second appeal involving patents relating to the original "Purple Pill®," a panel of the Federal Circuit split on whether an earlier patent application by a Korean company inherently anticipated one of AstraZeneca's patents covering the popular heartburn medication Prilosec® (omeprazole). The panel majority held that a process disclosed in a Korean patent application […]

Continue Reading →

Stay in Touch

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

Sign Up