Posts Tagged: "obvious"

The Federal Circuit also remanded to the Board further consideration of the undisputed evidence presented by Polaris that its ATVs were a commercial success. Polaris presented undisputed evidence that its vehicles had generated over $1.5 billion in sales since 2007 and that the commercial product was tied to the patent and claims entitling Polaris to a presumption of a nexus. Despite this undisputed evidence the Board still concluded that Polaris failed to prove a nexus, finding Polaris’ evidence conclusory.

On November 1st, a panel of administrative patent judges (APJs) at the Patent Trial and Appeal Board (PTAB) issued a final written decision which found that 11 claims of a networking patent held by Salt Lake City, UT-based wide area network (WAN) developer FatPipe Networks as being anticipated and obvious in light of prior art. A press release on the news from FatPipe, however, notes that the PTAB panel did not invalidate “a signature claim” of the patent covering a method for load balancing over disparate networks.

In an obviousness inquiry, material prior art references disclosing combinations of claimed limitations cannot be disregarded based on a drug product’s commercial viability or FDA approval. Teaching away from a claimed feature requires a reference to disclose that the feature is unworkable rather than less favorable.

The District of Delaware found that one of two patents asserted by Merck was not invalid and infringed, and the other patent, while infringed, was invalid as obvious. Merck appealed the conclusion of invalidity. The Federal Circuit affirmed… If the strongest evidence of nonobviousness are objective indicia, it is critical for the patentee to persuade the finder of fact that all four Graham factors need to be evaluated contemporaneously in making an obviousness determination.

An inherency rejection, whether it be inherent anticipation or inherent obviousness, can be extremely difficult to overcome. Indeed, at many times it seems there is a great deal of subjectivity weaved into an inherency rejection… Inherency was initially a doctrine rooted in anticipation, but has long since been applied to become applicable to obviousness rejections as well. What this means is this: Inherency may supply a missing claim limitation in either an obviousness rejection. See Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc., 773 F.3d 1186 (2014). However, the Federal Circuit has always been mindful that inherency in the context of an obviousness rejection must be carefully limited. There is “a high standard in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis…” Id.

Objective indicia must be evaluated before drawing an ultimate conclusion on obviousness, but are not necessarily part of a prima facie “motivation-to-combine” analysis. To prove inequitable conduct based on failure to correct a misrepresentation, the moving party must show actual knowledge of a material misrepresentation and a deliberate failure to inform the PTO with an intent to deceive.

The Board failed to address all grounds for proposed rejections under the APA by ignoring certain arguments made by Vicor during the reexamination. Additionally, the Board failed to address all four Graham factors. “[E]vidence relating to all four Graham factors…must be considered before determining whether the claimed invention would have been obvious…” The Board’s decision was erroneous because the same panel reached inconsistent conclusions on the same issue between the same parties and on the same record, and without explanation.

On Monday, August 7th, a judicial panel of the U.S. Court of Appeals for the Federal Circuit entered a decision in Personal Audio, LLC v. Electronic Frontier Foundation which is being widely hailed by the anti-patent crowd. The three judges on the panel issued a majority opinion, authored by Circuit Judge Pauline Newman, upheld a final written decision issued by…

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.

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 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 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 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 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 be unpatentable as obvious… Refusal by the Board to institute an IPR based on a particular reference does not necessarily preclude the Board from relying on that reference as additional support for a motivation to combine other references. Separate patentability arguments for dependent claims must be clearly argued lest they stand or fall with parent claims. A nexus for non-obviousness due to commercial success must clearly flow from the patented invention and not from subject matter known in the prior art.

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.