Posts Tagged: motivation to combine


Federal Circuit Again Reverses PTAB’s Finding of Unpatentability in Apple IPR Challenge

The Federal Circuit recently reversed a decision of the Patent Trial and Appeal Board (Board) finding claims of a patent owned by PersonalWeb Technologies, LLC to be …

Top Five Takeaways From a Deep Dive Into Obviousness at the PTAB

Since the America Invents Act ushered in a series of sweeping changes to the U.S. patent system in 2011, IP stakeholders have been grappling with Inter Partes …
By John Abramic
7 months ago 4

Federal Circuit Vacates PTAB Decision That Video Messaging Patent Claims Were Nonobvious

The Federal Circuit panel of Circuit Judges Timothy Dyk, Evan Wallach and Richard Taranto determined that the PTAB’s decision to uphold patent claims challenged by WhatsApp …
By Steve Brachmann
11 months ago 6

Federal Circuit Vacates PTAB’s Decision to Uphold Enthone Patent

The Federal Circuit recently issued a nonprecedential decision in BASF Corporation v. Enthone, Inc. which vacated an earlier decision stemming from an inter partes review (IPR) proceeding …
By Steve Brachmann
12 months ago 4

Inherent obviousness necessitates specific motivation to modify lead compound in pharma process due to surprising, unexpected results

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 …
By Jay S. Pattumudi
2 years ago 2

Refusal to institute IPR based on reference does not preclude use of reference for motivation to combine

The Federal Circuit affirmed a Patent Trial and Appeal Board (“Board”) decision finding a patent owned by Novartis AG and Mitsubishi Tanabe Pharma Corp. (collectively “Novartis”) to …

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 …

Federal Circuit Upholds Obviousness Rejection of Claimed Influenza Inhaler

A divided panel of the Federal Circuit affirmed the Board’s rejection of all pending claims as obvious in an appeal arising from a method for treating …

En Banc Federal Circuit finds substantial evidence to support jury verdict in Apple v. Samsung

The Court found substantial evidence to support the jury’s finding of infringement. While Samsung’s expert offered conflicting testimony, a reasonable jury could have credited Apple’…

CAFC Overturns PTAB IPR Decision for Refusing to Consider Motivation to Combine

On appeal, Ariosa challenged the Board’s refusal to consider the background reference because it was not identified as a piece of prior art “defining a combination …

Newman Says Obviousness is Matter of Foresight Not Hindsight

For most of us patent prosecutors, Judge Newman is our hero. She is one of us. On some occasions the patent planets even align and Judge Newman …
By Eric Guttag
9 years ago 8