Posts Tagged: "obviousness"

Yesterday, in a precedential decision, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a district court ruling that upheld the validity of several claims in two Amgen patents and barred Sandoz and Zydus from producing generic versions of Amgen’s psoriasis drug Otezla until 2028. The CAFC ruling also upheld the district court’s ruling that three claims in Amgen’s U.S. Patent 10,092,541 were invalid. However, that did not stop Amgen from declaring victory in the case in a press release.

On March 13, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Intel Corp. v. PACT XPP Schweiz AG reversing a final written decision of the Patent Trial and Appeal Board (PTAB) that found Intel had failed to show that PACT’s patent claims were invalid for obviousness. In reversing, the Federal Circuit ruled that the PTAB improperly rejected Intel’s “known technique” rationale supporting a motivation to combine prior art references under the flexible analysis set out by the U.S. Supreme Court’s landmark 2007 obviousness ruling in KSR v. Teleflex.

The United States Court of Appeals for the Federal Circuit (CAFC) ruled on March 1 that the Patent Trial and Appeal Board (PTAB) erred in its analysis of an inter partes review (IPR) filed by streaming giants Netflix and Hulu. The CAFC vacated and remanded the case, ordering the PTAB to once again review the patent dispute filed against DivX. “Because the Board legally erred in its obviousness analysis, and the error cannot be regarded as harmless, we vacate and remand,” wrote the CAFC judges in their ruling. Netflix and Hulu petitioned the PTAB to carry out an IPR in February 2020 of DivX’s U.S. Patent No. 10,225,588. The petition claimed the ‘588 patent was unpatentable due to obviousness.

I attended the hearing at the U.S. Court of Appeals for the Federal Circuit (CAFC) in Maalouf v. Microsoft on Monday February 6, 2023, and the CAFC issued its opinion in the case this past Thursday. This case has curious origins. Through his company Dareltech, Ramzi Khalil Maalouf, a Lebanese immigrant and U.S. citizen, sued Xiaomi, a Chinese multinational corporation, for patent infringement in New York. The case was dismissed without prejudice because Xiaomi was found not to have a physical presence in New York, notwithstanding their proven secret office.  Later, Microsoft, naming Xiaomi as the real party in interest, filed an Inter Partes Review (IPR) with the Patent Trial and Appeal Board (PTAB). In other words, a U.S. Big Tech multinational acted on behalf of a China-controlled multinational to invalidate the patents of a small American inventor, thus clearing the way into the U.S. market for the China-controlled multinational.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming the Patent Trial and Appeal Board (PTAB) on two mixed inter partes review (IPR) decisions involving American National Manufacturing and Sleep Number Corp. that found some, but not all, of the challenged claims not unpatentable. The IPRs on appeal involve U.S. Patent Nos. 8,769,747 and 9,737,154. They “describe systems and methods that purport to adjust the pressure in an air mattress ‘in less time and with greater accuracy’ than previously known.” American National filed IPR petitions challenging many claims of both patents and asserting that most of the challenged claims would have been obvious over various prior art references.

In its third precedential patent opinion this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) earlier today upheld a Patent Trial and Appeal Board (PTAB) decision finding that Mylan Pharmaceuticals, Inc. failed to show that certain claims of Merck Sharp & Dohme Corp.’s patent for a Type 2 Diabetes treatment were anticipated or would have been obvious over the cited prior art. Judge Lourie authored the opinion.

In a June 20, 2022, article on IPWatchdog, I addressed a portion of the June 8, 2022, letter from Senators Leahy, Blumenthal, Klobuchar, Cornyn, Collins and Braun  to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal requesting the USPTO to issue a notice of rulemaking or request for comments in the Federal Register by September 1, 2022, on curbing continuation practice as a means to address “patent thickets.”  As of the date of this article, the USPTO has not issued the notice. In this article, I, along with co-author Anthony Prosser, address the other issue raised in the Senators’ June 8 letter—whether elimination of terminal disclaimers that “allow” patents to issue that are “obvious variations of each other” would increase patent quality and whether patents that are tied by a terminal disclaimer should be considered an admission of obviousness and stand or fall together in litigation.

On August 26, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Best Medical International, Inc. v. Elekta Inc. affirming rulings by the Patent Trial and Appeal Board (PTAB) that invalidated patent claims covering a method and apparatus for radiation therapy of tumors. The appellate court, which issued a modified version of the opinion today to correct some minor formatting problems, also determined that Best Medical International (BMI) lacked standing to appeal the PTAB’s invalidation of claim 1 of BMI’s patent.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday affirmed a Patent Trial and Appeal Board (PTAB) ruling that Samsung Electronics had failed to prove certain claims of Dynamics, Inc.’s patent for a magnetic stripe emulator that communicates with credit card readers unpatentable as obvious. Samsung petitioned the PTAB for inter partes review (IPR) of claims 1 and 5-8 of U.S. Patent No. 8,827,153. The patent is directed to “magnetic stripe emulators” for “generat[ing] electromagnetic fields that directly communicate data to a read-head of a magnetic stripe reader,” such as the magnetic stripes on credit cards. Samsung argued that the claims would have been obvious over U.S. Patent No. 4,868,376 (Lessin) and U.S. Patent No. 7,690,580 (Shoemaker), or alternatively, would have been obvious over U.S. Patent No. 6,206,293 (Gutman) in view of Shoemaker.

The U.S. Court of Appeals for the Federal Circuit on Friday, April 29, held that the Patent Trial and Appeal Board (PTAB) erred in finding that Auris Health, Inc. had failed to demonstrate that the claims of Intuitive Surgical Operations, Inc.’s patent for robotic surgery systems were unpatentable as obvious. The CAFC said the PTAB impermissibly rested its motivation-to-combine finding on evidence of “general skepticism” about the field of invention and thus vacated and remanded.

Claimed inventions in issued patents must, of course, pass the statutorily required hurdles of novelty and non-obviousness. In the context of solid forms, there are particular nuances the practitioner should consider when formulating a strategy for obtaining such claims in the United States. This article touches upon novelty and obviousness matters which have arisen with solid-form patents and provides some food for thought on how to plan in advance to tackle these issues.

Earlier this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded a decision by the Patent Trial and Appeal Board (PTAB) in a post grant review where the PTAB concluded that Everstar did not meet its burden to demonstrate the challenged claims were unpatentable as obvious because it failed to show a motivation to combine the asserted prior art. The CAFC found that the PTAB abused its discretion when it refused to consider whether cost reduction would have driven one skilled in the art to combine the asserted prior art.

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled on Monday that the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) correctly held certain claims of Almirall, LLC’s U.S. Patent 9,517,219 for an acne treatment invalid as obvious. Almirall appealed the PTAB’s final decision in IPR2018-00608, in which the Board had found that the ‘219 patent, which covers methods of treating acne or rosacea, would have been obvious over the prior art at the time of invention.

On March 10, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB’s) obviousness determination and its denial of patent owner Hoyt Fleming’s motion to amend the asserted claims of the U.S. Patent No. RE47,474. Cirrus Design Corp. petitioned for inter partes review of multiple claims, including claims 135-139, of the ’474 patent. During the proceeding, Fleming moved to amend, seeking to replace the asserted claims with proposed substitute claims. The Board concluded that claims 137-139 were unpatentable as obvious over the combination of Cirrus Design’s Pilot Operation Handbook for the SR22, Revision A7, (Oct. 10, 2003) (POH) and U.S. Patent No. 6,460,810 (James). The Board further found that Fleming’s proposed amended claims did not meet the statutory and regulatory requirements for patentability because they lacked written description support and thus constituted new matter. On appeal, Fleming argued the Board erred in determining that the asserted claims are unpatentable and in denying his motion to amend.

On February 4, 2022, The U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed two decisions of the Patent Trial and Appeal Board (PTAB) on related inter partes reviews (IPRs) brought by Quanergy against Velodyne, explaining that the Board’s decision to uphold the validity of the disputed claims was correct considering the objective evidence provided by Velodyne. Quanergy challenged multiple claims of U.S. Patent No. 7,969,558, covering a lidar-based 3-D point cloud measuring system best known for helping autonomous cars sense their surroundings. In its decisions, the PTAB held that several claims of the ’558 patent are not unpatentable as obvious.