Warning: Declaration of IPW_Primary_Nav_Walker::start_el(&$output, $item, $depth, $args) should be compatible with Walker_Nav_Menu::start_el(&$output, $item, $depth = 0, $args = Array, $id = 0) in /home/ipwatch/public_html/wp-content/themes/ipwatchdog/lib/nav-walker-dropdown.php on line 0

Warning: Declaration of IPW_Primary_Nav_Walker_Dropdown::start_lvl(&$output, $depth, $args) should be compatible with Walker_Nav_Menu::start_lvl(&$output, $depth = 0, $args = Array) in /home/ipwatch/public_html/wp-content/themes/ipwatchdog/lib/nav-walker-dropdown.php on line 0

Warning: Declaration of IPW_Primary_Nav_Walker_Dropdown::end_lvl(&$output, $depth, $args) should be compatible with Walker_Nav_Menu::end_lvl(&$output, $depth = 0, $args = Array) in /home/ipwatch/public_html/wp-content/themes/ipwatchdog/lib/nav-walker-dropdown.php on line 0

Warning: Cannot modify header information - headers already sent by (output started at /home/ipwatch/public_html/wp-content/themes/ipwatchdog/lib/nav-walker-dropdown.php:0) in /home/ipwatch/public_html/wp-includes/feed-rss2.php on line 8
obviousness – IPWatchdog.com | Patents & Patent Law http://www.ipwatchdog.com Patents, Software Patents, Patent Applications & Patent Law Sun, 20 Aug 2017 11:15:25 +0000 en-US hourly 1 https://wordpress.org/?v=4.8.1 Board’s analysis internally inconsistent, Federal Circuit vacates inter partes reexam http://www.ipwatchdog.com/2017/08/11/board-erred-contradicting-federal-circuit-vacates-inter-partes-reexam/id=86711/ http://www.ipwatchdog.com/2017/08/11/board-erred-contradicting-federal-circuit-vacates-inter-partes-reexam/id=86711/#respond Fri, 11 Aug 2017 09:15:10 +0000 http://www.ipwatchdog.com/?p=86711 At the Federal Circuit, Honeywell argued that the Board erred in (1) finding a motivation to combine the references with a reasonable expectation of success, (2) rejecting Honeywell’s objective evidence of patentability, and (3) relying on a new ground of rejection (Omure), without giving Honeywell notice and opportunity to respond. The Court found that the Board improperly relied on inherency to find the claims obvious and in its analysis of motivation to combine. First, the Board’s analysis was internally inconsistent. While finding that “the claimed combination’s stability/miscibility is an inherent property of HFO-123yf and cannot confer patentability, the Board also acknowledged that inherent properties must be considered if they demonstrate unexpected and nonobvious results.

The post Board’s analysis internally inconsistent, Federal Circuit vacates inter partes reexam appeared first on IPWatchdog.com | Patents & Patent Law.

]]>
http://www.ipwatchdog.com/2017/08/11/board-erred-contradicting-federal-circuit-vacates-inter-partes-reexam/id=86711/feed/ 0
Inherent obviousness necessitates specific motivation to modify lead compound in pharma process due to surprising, unexpected results http://www.ipwatchdog.com/2017/08/10/inherent-obviousness-motivation-modify-lead-compound-surprising-unexpected-results/id=86661/ http://www.ipwatchdog.com/2017/08/10/inherent-obviousness-motivation-modify-lead-compound-surprising-unexpected-results/id=86661/#comments Thu, 10 Aug 2017 11:45:09 +0000 http://www.ipwatchdog.com/?p=86661 Inherent obviousness cannot be based on what the inventor thought, and, in addition, the results in a particular case may not be inherently obvious depending on what was expected by a person of ordinary skill. The court pointed out “’the mere fact that a certain thing may result from a given set of circumstances is not sufficient’ to render the results inherent.” Millennium Pharmaceuticals, 2017 WL 3013204, at *6 (citations omitted by author). The court also held that it is never appropriate to consider “what the inventor intended when the experiment was performed,” even though Millennium “conceded as a matter of law that the ester is a ‘natural result’ of freeze-drying bortezomib with mannitol.” Id. Thus, hindsight reasoning should never be applied and, obviousness is “measured objectively in light of the prior art, as viewed by a person of ordinary skill in the invention.”

The post Inherent obviousness necessitates specific motivation to modify lead compound in pharma process due to surprising, unexpected results appeared first on IPWatchdog.com | Patents & Patent Law.

]]>
http://www.ipwatchdog.com/2017/08/10/inherent-obviousness-motivation-modify-lead-compound-surprising-unexpected-results/id=86661/feed/ 2
Further Study Does Not Undermine Reasonable Expectation of Success; ‘Absolute Predictability’ is Not Required http://www.ipwatchdog.com/2017/08/04/further-study-does-not-undermine-reasonable-expectation-of-success/id=86418/ http://www.ipwatchdog.com/2017/08/04/further-study-does-not-undermine-reasonable-expectation-of-success/id=86418/#comments Fri, 04 Aug 2017 11:15:01 +0000 http://www.ipwatchdog.com/?p=86418 A reasonable expectation of success in combining references to obtain the claimed invention does not require absolute certainty or predictability. As a result, an invention is not non-obvious simply because persons of ordinary skill in the art continues to study aspects of the claimed invention after an initial disclosure. Rather, conducting additional or follow-up studies can be strong evidence that success is expected or likely.

The post Further Study Does Not Undermine Reasonable Expectation of Success; ‘Absolute Predictability’ is Not Required appeared first on IPWatchdog.com | Patents & Patent Law.

]]>
http://www.ipwatchdog.com/2017/08/04/further-study-does-not-undermine-reasonable-expectation-of-success/id=86418/feed/ 2
The Problem of Obviousness http://www.ipwatchdog.com/2017/08/03/problem-obviousness/id=86283/ http://www.ipwatchdog.com/2017/08/03/problem-obviousness/id=86283/#comments Thu, 03 Aug 2017 14:35:19 +0000 http://www.ipwatchdog.com/?p=86283 The overly inclusive nature of obviousness interpretations has led to problems. First, with an overly broad view of obviousness, patent applicants are encouraged to flood patent examiners with prior art references in order to immunize prosecution from future surprises of prior art, even though many of these references are irrelevant. This flood of prior art burdens examiners and encumbers the patent prosecution process. Second, PTO examiners, PTAB judges and the federal district courts have different standards of determining obviousness, with the courts maintaining a clear and convincing standard for challenging the validity of an issued patent. For example, examiners may tend to narrow prior art to the field of an invention, thereby allowing applications that are then retested in IPRs under broader (higher bandwidth) standards, thereby explaining discrepancies in IPR claim kill rates.

The post The Problem of Obviousness appeared first on IPWatchdog.com | Patents & Patent Law.

]]>
http://www.ipwatchdog.com/2017/08/03/problem-obviousness/id=86283/feed/ 14
Inherency in Obviousness – What is the Correct Standard? http://www.ipwatchdog.com/2017/08/01/inherency-obviousness-correct-standard/id=86290/ http://www.ipwatchdog.com/2017/08/01/inherency-obviousness-correct-standard/id=86290/#comments Tue, 01 Aug 2017 12:30:13 +0000 http://www.ipwatchdog.com/?p=86290 Although the distinction between inherency in obviousness and anticipation is sometimes blurred, the two concepts are quite different and a claim may be inherently anticipated without being inherently obvious.  This could happen if the missing and unknown limitation were to flow naturally from the teachings of the prior art, and yet not be predictedable... A major difference between having knowledge of the missing limitation versus not having it is that the knowledge can provide the motivation to combine prior art references. 

The post Inherency in Obviousness – What is the Correct Standard? appeared first on IPWatchdog.com | Patents & Patent Law.

]]>
http://www.ipwatchdog.com/2017/08/01/inherency-obviousness-correct-standard/id=86290/feed/ 5
Patentability: The Nonobviousness Requirement of 35 U.S.C. 103 http://www.ipwatchdog.com/2017/06/17/patentability-nonobviousness-35-usc-103/id=84716/ http://www.ipwatchdog.com/2017/06/17/patentability-nonobviousness-35-usc-103/id=84716/#comments Sat, 17 Jun 2017 14:00:10 +0000 http://www.ipwatchdog.com/?p=84716 The nonobviousness requirement is a critical element to patentability. In essence, even if the applicant can demonstrate patentable subject matter, utility and novelty, the patent will not issue if the invention is trivial. In order to determine if an invention is trivial it is necessary to see if there was motivation in the prior art to do what the inventor has done, or if there is some reasonable expectation that the combination of elements would achieve a successful result. If the prior art does not explicitly, and with identity of elements, teach the invention, the patent applicant may still be thwarted if there are a number of references that, when combined, would produce the claimed invention.

The post Patentability: The Nonobviousness Requirement of 35 U.S.C. 103 appeared first on IPWatchdog.com | Patents & Patent Law.

]]>
http://www.ipwatchdog.com/2017/06/17/patentability-nonobviousness-35-usc-103/id=84716/feed/ 2
Federal Circuit Ends Ping-Pong with District Court, Affirming Summary Judgment http://www.ipwatchdog.com/2017/05/26/federal-circuit-ends-ping-pong-district-court-affirming-summary-judgment/id=83724/ http://www.ipwatchdog.com/2017/05/26/federal-circuit-ends-ping-pong-district-court-affirming-summary-judgment/id=83724/#respond Fri, 26 May 2017 11:15:26 +0000 http://www.ipwatchdog.com/?p=83724 This marks the third return to the Federal Circuit of a dispute (the 050 case) between the ArcelorMittal Appellants and the AK Steel Appellees... Overall, the Federal Circuit affirmed the judgment invalidating ArcelorMittal’s reissue patent, finding that the district court: (1) possessed subject matter jurisdiction when it granted summary judgment, (2) properly followed the Court’s most recent mandate on remand, and (3) properly exercised its discretion to deny a Rule 56(d) request for new discovery on commercial success... When appropriate given all of the circumstances, a district court may have jurisdiction to consider claims of a reissue patent on remand, although the claims were not asserted at trial, e.g. if the reissue claims are sufficiently connected to the original case and the remand for such consideration is requested. A case or controversy is not moot, and jurisdiction is not avoided, by tendering an unexecuted and conditional covenant not to sue.

The post Federal Circuit Ends Ping-Pong with District Court, Affirming Summary Judgment appeared first on IPWatchdog.com | Patents & Patent Law.

]]>
http://www.ipwatchdog.com/2017/05/26/federal-circuit-ends-ping-pong-district-court-affirming-summary-judgment/id=83724/feed/ 0
Alice Who? Over Half the U.S. Utility Patents Issued Annually are Software Related! http://www.ipwatchdog.com/2017/05/21/alice-over-half-u-s-utility-patents-issued-annually-software/id=83367/ http://www.ipwatchdog.com/2017/05/21/alice-over-half-u-s-utility-patents-issued-annually-software/id=83367/#comments Sun, 21 May 2017 14:30:51 +0000 http://www.ipwatchdog.com/?p=83367 I have always argued that software patent eligibility is a must in a country where patent rights are guaranteed by the Constitution. That is, all fields of innovation should be treated equally under the law such that one field of endeavor (e.g., pharmaceuticals or electronics) is not deemed more “patent worthy” than other fields (i.e., computer science and information technology). This is especially true when one considers how important software is to the U.S. economy... A substantial amount of U.S. commerce is software-dependent and the associated innovation in the field – when novel and non-obvious – deserves stable and predictable patent law protection!

The post Alice Who? Over Half the U.S. Utility Patents Issued Annually are Software Related! appeared first on IPWatchdog.com | Patents & Patent Law.

]]>
http://www.ipwatchdog.com/2017/05/21/alice-over-half-u-s-utility-patents-issued-annually-software/id=83367/feed/ 12
PTAB Reversed for Failing to Explain the Basis for its Obviousness Decision http://www.ipwatchdog.com/2017/05/19/ptab-reversed-failing-explain-basis-obviousness-decision/id=83418/ http://www.ipwatchdog.com/2017/05/19/ptab-reversed-failing-explain-basis-obviousness-decision/id=83418/#comments Fri, 19 May 2017 15:15:41 +0000 http://www.ipwatchdog.com/?p=83418 The Federal Circuit vacated and remanded the PTAB's decision in an inter partes review proceeding, finding the Board did not set forth its reasoning for finding the asserted claims obvious in enough detail for the Court to determine whether it was supported by substantial evidence... The Board also did not set forth its reasoning in sufficient detail for the Court to determine whether its obviousness decision was procedurally proper. The Board must comply with certain procedural requirements in conducting an inter partes review under the Administrative Procedure Act (APA), including informing the patent owner of “the matters of fact and law asserted,” give the patent owner an opportunity to submit facts and arguments, and permit the patent owner to submit rebuttal evidence.

The post PTAB Reversed for Failing to Explain the Basis for its Obviousness Decision appeared first on IPWatchdog.com | Patents & Patent Law.

]]>
http://www.ipwatchdog.com/2017/05/19/ptab-reversed-failing-explain-basis-obviousness-decision/id=83418/feed/ 1
No evidence of lost sales or price erosion means no irreparable harm and no permanent injunction http://www.ipwatchdog.com/2017/05/07/ederal-circuit-affirms-on-infringement-validity-and-permanent-injunction/id=82957/ http://www.ipwatchdog.com/2017/05/07/ederal-circuit-affirms-on-infringement-validity-and-permanent-injunction/id=82957/#comments Sun, 07 May 2017 12:30:21 +0000 http://www.ipwatchdog.com/?p=82957 Nichia Corporation (“Nichia”) sued Everlight Americas, Inc., Everlight Electronics Co., Ltd. and Zenaro Lighting (collectively, “Everlight”) for infringement of three of Nichia’s patents disclosing packaging designs and methods of manufacturing LED devices. Following a bench trial, the district court found that Everlight infringed all three patents and failed to prove the patents invalid. The district court denied Nichia’s request for a permanent injunction. Nichia appealed the district court’s refusal to enter a permanent injunction, and Everlight cross-appealed the district court’s infringement and validity findings. The Court affirmed on all grounds.

The post No evidence of lost sales or price erosion means no irreparable harm and no permanent injunction appeared first on IPWatchdog.com | Patents & Patent Law.

]]>
http://www.ipwatchdog.com/2017/05/07/ederal-circuit-affirms-on-infringement-validity-and-permanent-injunction/id=82957/feed/ 3
If patent owner intends a special meaning, clear disavowal of ordinary meaning required http://www.ipwatchdog.com/2017/04/14/patent-owner-special-meaning-clear-disavowal-ordinary-meaning/id=82073/ Fri, 14 Apr 2017 12:45:20 +0000 http://www.ipwatchdog.com/?p=82073 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, the patent owner can expect to obtain the full scope of the term’s plain and ordinary meaning. Ordinary meaning also may yield to context, as where “sequence” may include “one bit,” not “at least two.” The Court also stresses that anticipation requires that a single reference “describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.” Ambiguous references do not anticipate a claim.

The post If patent owner intends a special meaning, clear disavowal of ordinary meaning required appeared first on IPWatchdog.com | Patents & Patent Law.

]]>
Is It Really That Obvious? A Tale of Two Decisions http://www.ipwatchdog.com/2017/04/09/really-obvious-tale-two-decisions/id=81750/ http://www.ipwatchdog.com/2017/04/09/really-obvious-tale-two-decisions/id=81750/#comments Sun, 09 Apr 2017 09:15:39 +0000 http://www.ipwatchdog.com/?p=81750 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 Anzures, Scott Forstall, Greg Christie, Imran Chaudhri, No. 2015-1975 (Fed. Cir. 2017) (Van Os) and In re: Ethicon, Inc., No. 2015-1696 (Fed. Cir. 2017) (Ethicon). In Van Os, the Appellants appealed a decision from the Patent Trial and Appeal Board (PTAB) affirming the Examiner’s rejection of the claims of U.S. Patent Application No. 12/364,470 under § 103. The court addressed the question of whether the PTAB properly held that the claims were obvious in light of prior art. The court vacated and remanded. In Ethicon, the Appellant appealed a decision from the PTAB affirming, in a merged inter partes reexamination, the Examiner’s rejection of the claims of U.S. patent 7,591,844 (the ’844 patent) under § 103. The court addressed the question of whether the PTAB properly affirmed the rejection of the claims of the ’844 patent under § 103. The court affirmed. These two cases raise several interesting questions, especially given that they were decided on the same day.

The post Is It Really That Obvious? A Tale of Two Decisions appeared first on IPWatchdog.com | Patents & Patent Law.

]]>
http://www.ipwatchdog.com/2017/04/09/really-obvious-tale-two-decisions/id=81750/feed/ 3