Posts Tagged: obviousness
CAFC Clarifies Section 103 Prior Art Enablement Requirement, Reverses PTAB Obviousness Finding
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 …
Balancing Innovation and Competition: Thomas Jefferson’s View of Obviousness for Mechanical Inventions
You cannot get a patent for an invention if it would have been obvious to a person of ordinary skill in the art at the time. This …
CAFC Reverses In-Part, Vacates In-Part PTAB Patentability Finding for Skin Cancer Detection Device
On February 18, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion in an appeal by Canfield Scientific, Inc. (Canfield) from the …
Pardon Me, But What Is the Point of Deciding Whether or Not a Reference ‘Teaches Away’?
"Teaching away" is a concept important to obviousness analysis under U.S. patent law. "Teaching away" basically bears upon the issue of motivation to combine elements in …
Federal Circuit Says PTAB Failed to Provide Proper Notice to IPR Respondent of Anticipation Theory
The U.S. Court of Appeals for the Federal Circuit (CAFC) on February 1 held in part that the United States Patent and Trademark Office’s (UPSTO) Patent …
CAFC Partially Vacates PTAB for Legal Error in ‘Reasonable Expectation of Success’ Analysis
On January 27, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed in-part and vacated in-part a decision of the Patent Trial and Appeal Board (…
The Inventive Step in Chinese Patent Law Compared With the U.S. Non-Obviousness Standard
While China is becoming an increasingly attractive patent filing destination for foreign companies, foreign counsels are often confused by the country’s inventive step requirement. Indeed, Chinese …
Federal Circuit Affirms Admissibility of Evidence Supporting Availability of Prior Art Submitted in IPR Reply Brief
On November 25, the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board in VidStream LLC v. Twitter, Inc., in which the PTAB held VidStream’…
Federal Circuit Considers CBM Review Under Thryv on Remand from SCOTUS
On November 17 the Federal Circuit affirmed a determination of the PTAB that claims were obvious in view of the prior art in an appeal that was returned …
Federal Circuit Affirms PTAB Finding that Immunex Antibody Patent is Obvious
The United States Court of Appeals for the Federal Circuit (CAFC) on Tuesday affirmed an invalidity decision of the U.S. Patent and Trademark Office’s Patent …
Federal Circuit Reinstates Jury Verdict Finding Claims of Biogen’s MS Drug Were Anticipated
On Monday, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Biogen MA, Inc. v. EMD Serono, Inc., reversing the U.…
Federal Circuit Shoots Down Apple Bid to Strike Certain Voip-Pal Claims Upheld by PTAB
In the latest episode of a long-running saga between Apple and Voip-Pal, the U.S. Court of Appeals for the Federal Circuit on Friday denied Apple’s …
‘Lead Development’ in Compound Claim Challenges
In an earlier article, “Tips for Selecting a ‘Lead Compound’ in Compound Claim Challenges,” I introduced an approach derived by U.S. federal courts called the “lead …
An Argument for Mandatory Production of Limited Secondary Consideration Evidence by Petitioners in Inter Partes Reviews
The Federal Circuit has repeatedly confirmed that secondary consideration evidence is an integral part of an obviousness analysis (indeed, it “may be the most pertinent, probative, and …
PTAB Decides Against Moderna in Challenge to Arbutus Vaccine Patent
On January 9, 2019, Moderna Therapeutics, Inc. (“Moderna”) filed a petition requesting inter partes review of U.S. Patent No. 8,058,069 (the ‘069 patent) owned by Arbutus Biopharma. The ‘069 patent is …
