[E]vidence relating to all four Graham factors -- including objective evidence of secondary considerations -- must be considered before determining whether the claimed invention would have been obvious to one of skill in the...more
Where a court holds a claim obvious without making findings of secondary considerations, the lack of specific consideration of secondary considerations ordinarily requires a remand....more
In disclaiming claim coverage in light of certain prior art, the applicant does not thereby act as a lexicographer, redefining individual words....more
Expert testimony [may be] required not only to explain what the prior art references disclosed, but also to show that a person skilled in the art would have been motivated to combine them in order to achieve the claimed...more
On April 16, 2013, in Bayer Schering Pharma AG v. Watson Pharm., Inc., the U.S. Court of Appeals for the Federal Circuit (Lourie,* Schall, Prost) reversed the district court's summary judgment that U.S. Reissue Patent No....more
On April 4, 2013, in Saffran v. Johnson & Johnson, the U.S. Court of Appeals for the Federal Circuit (Lourie,* Moore, O'Malley) reversed the district court's judgment that Johnson & Johnson and Cordis Corp. infringed U.S....more
On April 5, 2013, in In re Morsa, the U.S. Court of Appeals for the Federal Circuit (Rader, Lourie, O'Malley*) affirmed-in-part, vacated-in-part and remanded the USPTO Board of Patent Appeals and Interferences decision...more
"[A]nticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation, [or the reference] cannot inherently anticipate the claims."...more
[T]he preamble constitutes a limitation when the claim(s) depend on it for antecedent basis, or when it "is essential to understand limitations or terms in the claim body."
On December 27, 2012, in C.W. Zumbiel Co. v....more
"[A]lthough § 102(g) prior art must be somehow made available to the public in order to defeat another patent, a § 102(g) prior inventor is under no obligation to file a patent application." Commercialization has been relied...more