News & Analysis as of

Obviousness

Vorys, Sater, Seymour and Pease LLP

The Precedent: The Federal Circuit Provides Guidelines for Challenging Expired Patents in Apple Inc. v. Gesture Tech. Partners,...

In this edition of The Precedent, we outline the decision in Apple Inc. v. Gesture Tech. Partners, LLC. In Apple Inc., v. Gesture Tech Partners, LLC, the Federal Circuit reviewed the Patent Trial and Appeal Board’s (PTAB)...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Provides Further Clarity on Issues Surrounding Patent Validity in Novartis Pharmaceuticals Corp. v....

In this edition of The Precedent, we outline the validity of a pharmaceutical patent concerning the patent’s written description. Following an appeal from the United States District Court for the District of Delaware, the...more

WilmerHale

Federal Circuit Patent Watch: Federal Circuit Orders Remanded Case Reassigned to New Judge, Finding That Trial Judge’s Statements...

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Precedential and Key Federal Circuit Opinions - HD SILICON SOLUTIONS LLC v. MICROCHIP TECHNOLOGY INC. [OPINION] (2023-1397, 2/6/2025) (Lourie, Stoll, Cunningham) - Lourie, J. The Board affirmed the Final Written...more

Quarles & Brady LLP

Sometimes Less is More: Patentability of “Simple” Designs

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When there are fewer design elements in a design claim or when the individual elements of the design seem commonplace in isolation, it can be easy to overlook the inventive effort that went into developing a design. Rather...more

Alston & Bird

Intellectual Property Litigation Newsletter | February 2025

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Welcome to the Intellectual Property Litigation Newsletter, our review of decisions and trends in the intellectual property arena. In this edition, we learn that the Federal Circuit always says never, patent publications...more

Smart & Biggar

Avoiding the hindsight trap in the context of a patent obviousness analysis

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While courts have often warned that hindsight bias should be avoided when assessing whether a patented invention would have been obvious to the skilled person, the application of this principle can be challenging in practice....more

McDonnell Boehnen Hulbert & Berghoff LLP

What? The Pokémon Company’s Patent Applications Are Evolving!

In September of last year, and in light of a corresponding Japanese patent infringement suit, I published an article detailing how The Pokémon Company had filed two patent applications at the United States Patent and...more

Venable LLP

Spotlight On: Actemra® (tocilizumab) / Tofidence™ (tocilizumab-bavi) / Tyenne® (tocilizumab-aazg) / Avtozma® (tocilizumab-anoh) -...

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Tocilizumab Challenged Claim Types in IPRs: Claims are counted in each IPR, so claims from the same patent challenged in multiple IPRs are counted more than once. Within each IPR, claims are counted only once, whether they...more

McDonnell Boehnen Hulbert & Berghoff LLP

Regeneron Pharmaceuticals, Inc. v. Mylan Pharmaceuticals Inc. (Fed. Cir. 2025)

Note: This post addresses two Federal Circuit decisions issued on January 29, 2025.  Both appeals involved Plaintiff-Appellee Regeneron Pharmaceuticals, Inc., with the first appeal involving Defendant-Appellant Formycon AG...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions

2024 brought exciting developments at the Federal Circuit. The court issued its first en banc decision in a patent case in five years in LKQ, which significantly altered the standard for proving obviousness of a design...more

Knobbe Martens

Every Word Counts: Specification Naming Conventions Can Limit Claim Scope

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A patent’s specification established a naming convention that applied to terms in the patent’s claims. Microchip Technology filed an IPR, arguing all claims of HD Silicon Solutions’ patent were invalid. The challenged patent...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Clarifies Timing Issues Associated with Pre-AIA Patent Applications in Lynk Labs, Inc. v. Samsung...

In this edition of The Precedent, we outline the recent federal circuit decision in Lynk Labs, Inc. v. Samsung Elecs. Co. This case addresses the date on which a pre-AIA published patent application obtains its status as...more

Alston & Bird

Patent Case Summaries | Week Ending February 7, 2025

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HD Silicon Solutions LLC v. Microchip Technology, Inc., No. 2023-1397 (Fed. Cir. (PTAB) Feb. 6, 2025). Opinion by Lourie, joined by Stoll and Cunningham....more

McDermott Will & Emery

It’s Obvious: Erroneous Claim Construction Can Be Harmless

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board obviousness determination even though it found the Board had improperly construed a claim term, because the Court found the error harmless...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 PTAB Year in Review: Analysis & Trends – 2024 PTAB Case Highlights

Abuse of Process and/or Sanctions – 37 C.F.R. § 42.12 - Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847, IPR2021-00850, IPR2021-00854, IPR2021-00857 & IPR2021-00860 - Decision...more

Fish & Richardson

The Most Interesting Appellate Cases of 2024

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Appellate courts issued a variety of notable intellectual property (IP) cases in 2024, including cases touching on Orange Book listings, extraterritoriality, willful infringement, design patent obviousness, and public...more

Rothwell, Figg, Ernst & Manbeck, P.C.

PTAB’s Jurisdiction Over Expired Patents Confirmed by Federal Circuit

On January 27, 2025, the Federal Circuit held that the Patent Trial and Appeal Board (“PTAB”) “has jurisdiction over IPRs concerning expired patents.” See Apple Inc. v. Gesture Tech. Partners, LLC, 2025 WL 299939, *2 (Fed....more

Knobbe Martens

Federal Circuit Review | January 2025

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In Honeywell International Inc. v. 3G Licensing, S.A., Appeal No. 23-1354, the Federal Circuit held that under the obviousness standard of 35 U.S.C. § 103, the motivation to modify prior art does not need to be the same as...more

Goodwin

Federal Circuit Affirms Injunction Against Samsung and Formycon in Aflibercept BPCIA Litigation

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On January 29, 2025, the U.S. Court of Appeals for the Federal Circuit affirmed the District Court for the Northern District of West Virginia’s entries of preliminary injunction preventing Samsung Bioepis Co., Ltd....more

Knobbe Martens

The Patent Trial and Appeal Board Has Jurisdiction Over IPRs Challenging Expired Patents

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Before Lourie, Dyk, and Hughes. Appeals from the United States Patent and Trademark Office. Summary: The Patent Trial and Appeal Board has jurisdiction over IPRs concerning expired patents because the review of such patents...more

Jones Day

No Need to Show Reasonable Expectation of Success Regarding Inherent Property

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The Federal Circuit affirmed six PTAB decisions that held unpatentable as obvious 79 claims of three Cytiva Bioprocess (“Cytiva”) challenged patents and reversed the PTAB decision upholding four claims....more

Polsinelli

New PTAB Guidance on Enabling Requirement Under § 102 of the AIA and Construction of Chemical Compound

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Synopsis: In a recently issued final written decision, the Patent Trial and Appeal Board (the “Board”) found all challenged claims of U.S. Patent No.11,572,334 (“the ’334 patent”) unpatentable.1 The Board’s decision centered...more

Alston & Bird

Patent Case Summaries | Week Ending January 31, 2025

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Apple Inc., et al. v. Gesture Technology Partners, LLC, Nos. 2023-1501, -1554 (Fed. Cir. (PTAB) Jan. 27, 2025). Opinion by Dyk, joined by Lourie and Hughes....more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Challenges Reasonable Expectation of Success Prong of Obviousness Law Precedent in Immunogen v. Vidal

The U.S. Patent and Trademark Office has a history of attempting to challenge judicial decisions that the Office, usually for its own policy reasons, takes issue with.[1]  Recently, the Office decided to challenge the...more

Irwin IP LLP

2024 Patent Landscape -- Year In Review

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Over the course of 2024, the patent law landscape has continued to evolve as significant court rulings and emerging technologies shaped its direction. During 2024, activities at the Supreme Court, the Federal Circuit, various...more

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