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Nonprecedential CAFC Decision Presents Questions of Standing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 …
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 …
‘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 …
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 …
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 …
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 …
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 …
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 …
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 …
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 (…
