Posts Tagged: "inherent anticipation"

The Federal Circuit affirmed the rejection of several claims in a patent owned by Monsanto… Extrinsic evidence is permissible to interpret an allegedly anticipating references and to shed light on what it would have meant to a POSA. For purposes of inherent anticipation, recognition is not required within the prior art itself and need not antedate the patent at issue or have contemporaneous recognition by a POSA.

An inherency rejection, whether it be inherent anticipation or inherent obviousness, can be extremely difficult to overcome. Indeed, at many times it seems there is a great deal of subjectivity weaved into an inherency rejection… Inherency was initially a doctrine rooted in anticipation, but has long since been applied to become applicable to obviousness rejections as well. What this means is this: Inherency may supply a missing claim limitation in either an obviousness rejection. See Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc., 773 F.3d 1186 (2014). However, the Federal Circuit has always been mindful that inherency in the context of an obviousness rejection must be carefully limited. There is “a high standard in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis…” Id.

It is inappropriate for a trial court to discount material expert testimony so as to weigh the evidence in favor of a party seeking summary judgment. The presence of a genuine dispute precludes summary judgment in such cases. … Failure to disclose arguments concerning claims of a different scope in a different patent application was not inequitable conduct when differences were apparent to the Examiner.