Posts Tagged: "obviousness"

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.

The U.S. Court of Appeals for the Federal Circuit in a precedential decision yesterday affirmed a Patent Trial and Appeal Board (PTAB) decision that Teva Pharmaceuticals had failed to prove Corcept Therapuetics’ U.S. Patent No. 10,195,214 would have been obvious. The patent covers methods of treating Cushing’s syndrome, a disease caused by excessive levels of the naturally occurring steroid hormone, cortisol. Chief Judge Moore authored the opinion.

The arrival of a U.S. Patent and Trademark Office (USPTO) office action citing no less than six earlier patents directed to various sub-combinations in the features of the main independent claim in an application which I was handling prompted the present note. Readers may recall the decision of Judge Rich In re Winslow 365 F.2d 1017 (C.C.P.A. 1966): “We think the proper way to apply the 103-obviousness test to a case like this is to first picture the inventor as working in his shop with the prior art references — which he is presumed to know — hanging on the walls around him.” However, Boltzmann’s entropy formula S = k log W where S represents entropy, a concept associated with a state of disorder, randomness, or uncertainty, and W represents the number of possible states in the relevant system, leaves an unforgettable impression on those who have studied it. Even if the fields from which the earlier patents might be selected are restricted to relevant general classifications, the number of combinations of six references which might have been collected together from the body of prior art in the relevant technical field randomly and without knowledge of the invention is mind-boggling.

The U.S. Court of Appeals for the Federal Circuit yesterday reversed the Patent Trial and Appeal Board’s (PTAB’s) finding that Campbell Soup Company, Campbell Sales Company, and Trinity Manufacturing, LLC did not demonstrate the claimed designs of Gamon, Inc.’s design patents would have been obvious over the prior art. The CAFC held that the designs were obvious because Gamon did not prove a nexus between commercial success and the claims, and because the evidence of Trinity’s copying did not overcome the strong evidence of obviousness provided by the prior art.

In The Chemours Company FC, LLC v. Daikin Industries, Ltd., Nos. 2020-1289, 2020-1290 (Fed. Cir. July 22, 2021) (“Chemours v. Daikin”), the Federal Circuit clarified three doctrines involved in the determination of obviousness: teaching away, commercial success, and blocking patents. While all three panel judges agreed that the Patent Trial and Appeal Board (“Board”) misapplied the commercial success and blocking patents doctrines, they disagreed as to the Board’s application of the teaching away doctrine. In contrast to the Board, the majority found evidence of teaching away in the prior art. But Judge Dyk, dissenting, found no such evidence and called the majority’s determination an impermissible expansion of the doctrine that now encompassed a reference’s mere preference for a particular alternative.

Artificial intelligence (AI) is everywhere, touching nearly every aspect of our daily lives, including how we work, communicate, shop, travel and more. The term “AI” is generally understood to encompass computerized systems that perform tasks ordinarily perceived as requiring some form of human intelligence. Many AI-based systems are able to recognize trends, patterns and connections, test hypotheses using available data sets, and continuously improve decision trees based on user input. As such, AI has been shown to have near endless applications, driving a surge of inventions and related patent application filings.

The United States Court of Appeals for the Federal Circuit (CAFC) yesterday concluded that the Patent Trial and Appeal Board’s (PTAB’s) decision finding certain claims of Chemours’ patents obvious was not supported by substantial evidence and that the Board erred in its analysis of objective indicia of nonobviousness. As such, the CAFC reversed the decisions.

On May 28, the United States Court of Appeals for the Federal Circuit (CAFC) reversed a decision of the Patent Trial and Appeal Board (Board), holding certain claims of U.S. Patent No. 8,554,579 (the ‘579 patent) are invalid as obvious under 35 U.S.C. §103. Baxter Corporation Englewood (Baxter) is the owner of the ‘579 patent, which discloses “[s]ystems for preparing patient-specific doses and a method for telepharmacy in which data captured while following [a protocol associated with each received drug order and specifying a set of steps to fill the drug order] are provided to a remote site for review and approval by a pharmacist.”

Last week, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed an inter partes review (IPR) decision from the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) in Raytheon Technologies Corporation (Raytheon) v. General Electric Company (GE). The PTAB found claims 3 and 16 of U.S. Patent No. (the ‘751 patent) unpatentable under Section103 as obvious in view of a 1987 NASA technical memorandum (the “Knip” reference). Raytheon submitted evidence that the Knip reference relied on the use of nonexistent composite materials, and thus failed to enable one of ordinary skill in the art to make and use the claimed invention. The PTAB sided with GE, even though GE made no attempt to rebut the evidence presented by Raytheon. The CAFC disagreed.