Posts Tagged: "obviousness"

This week on IPWatchdog Unleashed, I speak with my long-time friend Jim Carmichael, who is a former Administrative Patent Judge and the founder of Carmichael IP. In this extended 75-minute conversation, Carmichael discusses ten ways the USPTO could and should fix the PTAB, from fully reclaiming institution authority to eliminating expert witnesses in post grant proceedings to presuming the existence of a nexus for secondary considerations.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a Patent Trial and Appeal Board (PTAB) ruling that a Xerox Corporation patent was unpatentable as obvious despite finding error with the Board’s claim construction analysis. The opinion was authored by Chief Judge Moore; Judge Stark joined only in Part II.

The Chief Judge of the U.S. Court of Appeals for the Federal Circuit (CAFC), Kimberly Moore, on Monday authored a short precedential decision vacating and remanding a Patent Trial and Appeal Board (PTAB) decision that had found certain claims of Sisvel’s data transmission patent to be unpatentable.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today in a precedential decision upheld a mixed Patent Trial and Appeal Board (PTAB) ruling that found some claims of Gesture Technology’s patent on camera sensing technology for handheld gaming and other devices to be unpatentable, but others not proven unpatentable. The inter partes review (IPR) was brought by Apple, Inc., which appealed the Board’s partial finding of unpatentability.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today vacated and remanded a decision of the Patent Trial and Appeal Board (PTAB) because it said the Board’s decision was “unclear as to whether it relied on a new obviousness theory” not presented by any party and failed to provide “a reasoned explanation that is supported by substantial evidence” for accepting the petitioner’s motivation to combine argument.  

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a decision marked precedential that found the Patent Trial and Appeal Board (PTAB) construed HD Silicon Solutions’ patent claims erroneously, but that the error was harmless, thus upholding the PTAB’s invalidation of the claims as obvious.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision reversing a district court’s determination that certain claims of a patent for Novartis’ heart failure drug Entresto were invalid for lack of written description, and affirming a finding that the claims were not shown to be invalid for obviousness, lack of enablement, or indefiniteness. Judge Lourie authored the opinion.

Imagine a pharmaceutical researcher in 2015 searching for new drug candidates to treat a rare disease. Through traditional methods, they might screen a few thousand compounds over several months, carefully evaluating each candidate’s potential based on known chemical properties and biological mechanisms. Fast forward to 2025: using modern AI tools, that same researcher can screen millions of compounds in days, with the AI system predicting binding affinities, potential side effects, and even suggesting novel molecular structures that human chemists might never have conceived. This dramatic expansion of capabilities raises a crucial question for patent law: Has the widespread adoption of AI tools fundamentally changed what constitutes “ordinary skill” in drug discovery?

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday in a precedential opinion vacated and remanded a decision of the Patent Trial and Appeal Board (PTAB) that had found Palo Alto Networks (PAN), Inc. failed to establish certain claims of Centripetal Networks, LLC’s Communication Network patents unpatentable as obvious. The CAFC said the PTAB erred by not sufficiently explaining its reasoning with respect to its motivation to combine analysis.

An invention cannot be patented if the differences between a claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was made. Determining obviousness – and the validity of your patent – is more than simply establishing that the invention doesn’t already exist and that it isn’t documented elsewhere. Its conception must also not have otherwise been obvious to those in the field at the time.

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a pair of rulings on appeals filed by cybersecurity developer Centripetal Networks, following decisions by the Patent Trial and Appeal Board (PTAB) that invalidated its patent claims to network threat detection technologies. Affirming the PTAB’s obviousness findings in both rulings, the Federal Circuit found substantial evidence supporting the Board’s claim constructions underlying those obviousness determinations, despite a sometimes-unclear separation between the Board’s claim construction and analysis.

The U.S. Court of Appeals for the Federal Circuit (CAFC), in a precedential decision, today rejected Planmeca Inc. USA’s attempt to argue that a person of ordinary skill in the art (POSITA) must have had the requisite experience to qualify as an expert at the time of invention, rather than as of the time of testimony. Judge Stoll authored the opinion.
Osseo Imaging LLC sued Planmeca for infringement of several patents covering 3D imaging systems and a jury ultimately found that Planmeca directly infringed all asserted claims but one and that none of the claims were invalid for obviousness. The jury was instructed during trial that “a person of ordinary skill in the art would have a bachelor’s degree in electrical or computer engineering, plus 3 to 5 years working in a diagnostic imaging environment that uses the techniques described in the Asserted Patents.”

On August 16, the U.S. Court of Appeals for the Federal Circuit issued a nonprecedential ruling in Cisco Systems, Inc. v. K.Mizra LLC vacating the Patent Trial and Appeal Board’s (PTAB) determination that Cisco failed to show a motivation to combine a pair of prior art references in arguing that K.Mizra’s challenged patent claims were obvious. The Federal Circuit faulted the PTAB for its rigid application of motivation to combine analysis, and found that the Board lacked substantial evidence in rejecting a benefits-based motivation to combine rationale proffered by Cisco.

The U.S. Supreme Court today denied a petition for certiorari seeking clarification from the Court on the proper standard for a showing of obviousness. Vanda Pharmaceuticals filed the petition following the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) May 2023 decision invalidating Vanda’s patent on a method of using the drug tasimelteon to treat Non-24-Hour Sleep-Wake Disorder. The CAFC came to its decision in part because the court said the disclosure of clinical trials was evidence that a person of ordinary skill in the art “would have had a reasonable expectation of success.” Vanda argued in its Supreme Court petition that a “predictable results” standard should be applied instead and maintained that the High Court said as much in KSR v. Teleflex.

In a precedential decision authored by Judge Lourie, the U.S. Court of Appeals for the Federal Circuit affirmed a district court’s final judgment that certain claims of several patents owned by Salix Pharmaceuticals for a drug used to treat irritable bowel syndrome (IBS) and other ailments were invalid as obvious. The CAFC also affirmed an order of the district court that instructed the Food and Drug Administration (FDA) that the effective approval date of generic company Norwich’s Abbreviated New Drug Application (ANDA) may not precede the expiration dates of the claims of three other Salix patents that were found to be valid and infringed by Norwich. Norwich cross-appealed from that order and also from the denial of its motion to modify the district court’s final judgment.