Posts Tagged: obviousness


Nonprecedential CAFC Decision Presents Questions of Standing

In Knauf Insulation, Inc. v. Rockwool International, the U.S. Court of Appeals for the Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s …
By Eileen McDermott
6 days ago 1

Standard Essential Patents: Statistics and Solutions to the Real Party in Interest Problem

As I noted in part one of my talk at the IPWatchdog Patent Masters Symposium, the validity statistics for SEPs do not look very good at first …
By David Cohen
20 days ago 1

‘Substantially Equivalent’ Disclosure May Satisfy Written Description Requirement Under Certain Circumstances

The Federal Circuit recently affirmed in part and reversed in part a district court decision holding that Actavis Laboratories FL, Inc.’s (“Actavis’s”) generic Abbreviated New …

Are All Safety-Related Inventions Obvious After Celgene?

The case of Celgene Corp. v. Peter, Nos. 2018-1167 et al. (Fed. Cir. July 30, 2019) has drawn attention for its decision that inter partes review (IPR) may be …
By Daniel Hanson
2 months ago 17

Don’t Let Experts Testify as to Obviousness

When obviousness of a patent claim is at issue, some experts may opine along these lines: "Therefore, the subject matter of claim 1 would have been obvious before …
By Daniel Hanson
3 months ago 16

Distinguishing Colloquial Obviousness and Legal Obviousness

Have you ever worked with a lay inventor who had a hard time dealing with obviousness under U.S. patent law? Many patent lawyers have. It is …
By Daniel Hanson
5 months ago 8

Pinning False Blame of Lack of Enablement In Issued Patents On the USPTO

Last week, the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet, held an oversight hearing on the U.S. Patent and Trademark Office (USPTO) with …
By Ron Katznelson, Ph.D.
5 months ago 20

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

Simultaneous Invention as Secondary Evidence of Obviousness

Is an invention arrived at by multiple inventors within a short space of time necessarily obvious? If not, how far may the evidence of simultaneous or contemporaneous …

Federal Circuit Holds Parties Joined to an IPR have Right to Appeal PTAB Decision—Even if Original Petitioner Lacks Article III Standing

The Federal Circuit on February 1 affirmed the Patent Trial and Appeal Board’s final written decision in an inter partes review concluding that the claims of a …

Other Barks & Bites: IP News to Watch, January 25, 2019

Today marks the return of our Other Barks & Bites feature, which will profile a collection of news headlines from around the IP world and across practice areas …
By IPWatchdog
9 months ago 0

The Supreme Court Should Grant Cert in Zup to Correct Obviousness Doctrine

On behalf of nonprofit, U.S. Inventor, Inc., and over a dozen other amici, Flachsbart & Greenspoon, LLC has submitted a Brief of Amici Curiae urging the Supreme …
By Robert P. Greenspoon
9 months ago 29

Federal Circuit Allows Reconsideration of Non-Instituted Ground in IPR

In AC Techs., S.A. v. Amazon.com, Inc. the Federal Circuit found the PTAB did not exceed its statutory authority by addressing a non-instituted ground on …

Motivation to Combine Unnecessary Under Section 103 if Secondary Reference Does Not Supply Element or Teaching

On January 10, the Federal Circuit issued an opinion affirming a decision of the Patent Trial and Appeal Board (PTAB) invalidating several claims of U.S. Patent No. 6,597,812 (…
By Gene Quinn
9 months ago 10