Posts Tagged: obviousness


If patent owner intends a special meaning, clear disavowal of ordinary meaning required

If the patent owner intends claim terms to have a special meaning, the patent must provide a clear disavowal of ordinary meaning or an alternative lexicography. Otherwise, …

Is It Really That Obvious? A Tale of Two Decisions

On January 3, 2017 the Court of Appeals for the Federal Circuit (the court) handed down two decisions relating to obviousness under § 103 – In re: Marcel Van Os, Freddy Allen …
By William Gvoth & Paul Gurzo
16 days ago 3

PTAB ends Kyle Bass IPRs targeting Acorda patents on Ampyra MS treatment with no findings of obviousness

A panel of administrative patent judges (APJs) at the Patent Trial and Appeal Board (PTAB) issued a final written decision ending a series of inter partes review (…
By Steve Brachmann
1 month ago 2

CAFC sides with L.A. Biomedical Research over Eli Lilly in two IPRs challenging penile fibrosis patent

LAB sued Eli Lilly & Company, alleging marketing of the drug Cialis induced infringement of LAB’s patent. Eli Lilly subsequently requested that the Board conduct inter partes …

Federal Circuit Remands Apple PTAB Victory Because Board Failed to Explain Motivation to Combine

The PTAB agreed with Apple and invalidated the patent. The Federal Circuit remanded because the Board failed to adequately explain its finding that a skilled artisan would …

Derivation requires showing conception and communication of idea from claimed invention, not an obvious variant

Mylan had to show by clear and convincing evidence that the idea for the ’445 patent claim was conceived by someone at the FDA and communicated to Mr. …

The Federal Circuit Affirms District Court’s Grant of Preliminary Injunction

Practitioners dealing with a magistrate judge’s report and recommendation should be sure to preserve objections for appeal, since failing to object may lead to a more …

Validity of bottle cap patent upheld in IPR thanks to market success in Peru

The patent owner made a successful argument regarding secondary considerations, specifically relating to the success of the bottle cap in the country of Peru, which led in …
By Steve Brachmann
3 months ago 0

Federal Circuit Affirms PTAB Decision on Obviousness, Judge Newman Dissents

The Court’s opinion stresses that in an obviousness analysis, it should consider “whether the improvement is more than the predictable use of prior art elements according …

CAFC: When Relying Common Sense There Must be Explicit and Clear Reasoning

The Board’s determination was “potentially lawful but insufficiently or inappropriately explained.” The finding of obviousness was vacated and the case was remanded for further proceedings... Obviousness …

Could or should the USPTO adopt the EPO problem-and-solution approach for assessing obviousness?

There is a plausible case that the US law on obviousness is indeed compatible with the EPO problem-and-solution approach. It could even be said that the steps …
By Brian Cronin
3 months ago 13

The broadest reasonable interpretation of a patent claim does not extend to a legally incorrect interpretation

In a December 22, 2016 decision, the Federal Circuit vacated a decision by the Patent Trial and Appeal Board (“The Board”) in two inter partes review (IPR) proceedings. The …

The Year in Patents: The Top 10 Patent Stories from 2016

To come up with the list below I’ve reviewed all of our patent articles, and have come up with these top 10 patent stories for 2016. They appear …
By Gene Quinn
4 months ago 7

The quest for patent quality: European inventive step and US obviousness

In Europe and the US, patentability depends on a showing of inventiveness that is based on similar legal requirements but practice differs substantially and the resulting patent …
By Brian Cronin
4 months ago 9

Federal Circuit Remands Inter Partes Review Decision Invalidating NuVasive Patent

NuVasive owns a patent relating to spinal fusion implants. Medtronic petitioned the Patent Trial and Appeal Board (the “Board”) to institute an inter partes review challenging the …