News & Analysis as of

Patent Litigation Obviousness Inventions

Sheppard Mullin Richter & Hampton LLP

The Federal Circuit Clarifies the Meaning of “Publicly Disclosed”

This decision emphasizes the significance of broader public dissemination to meet the statutory requirement of “publicly disclosed” for purposes of exceptions to prior art under 35 U.S.C. § 102(b)(2)(B)....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2024

Sanho Corp. v. Kaijet Technology International Limited Inc., Appeal No. 2023-1336 (Fed. Cir. July 31, 2024) In our Case of the Week, the Federal Circuit held that the private but non-confidential sale of thousands of...more

Kilpatrick

Federal Circuit Upends Design Patent Validity Test

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Unlike utility patents, which are frequently invalidated on obviousness grounds, design patents historically faced a rigid test making obvious findings rare. The Federal Circuit has just issued an en banc decision that upends...more

Bradley Arant Boult Cummings LLP

Spring Has Sprung Obviousness Trends from the Federal Circuit

There have been only a few precedential decisions from the Federal Circuit related to obviousness since spring sprung. While these decisions have produced mixed results for the lower courts, clinical study protocols have held...more

AEON Law

Patent Poetry: Federal Circuit Finds No Motive to Combine in Laser Projector Patent Case

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The Federal Circuit has reversed a finding by the Patent Trial and Appeal Board (PTAB or Board) that certain challenged claims of a patent for a method for aligning a laser projector with respect to a work surface are...more

American Conference Institute (ACI)

[Event] 22nd Advanced Summit on Life Sciences - May 29th - 30th, New York, NY

Hosted by American Conference Institute, the 22nd Advanced Summit on Life Sciences Patents returns for another exciting year with curated programming that will provide practical insights on how to maximize your patent term...more

McDermott Will & Emery

Consider Invention When Assessing Support for Claimed Range

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The US Court of Appeals for the Federal Circuit affirmed in part and vacated in part a Patent Trial & Appeal Board finding that the claims at issue were either invalid under 35 U.S.C. §112 as unsupported by written...more

Sheppard Mullin Richter & Hampton LLP

The Intertwining Nature of Motivation to Combine and Reasonable Expectation of Success

In Elekta Limited v. Zap Surgical Systems, Inc., No. 21-1985 (Fed. Cir. Sept. 21, 2023), the case addresses the interplay between findings related to motivation to combine and reasonable expectation of success in determining...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2023

Penumbra, Inc. v. Rapidpulse, Inc., IPR2021-01466, Paper 34 (P.T.A.B. March 10, 2023) In a PTAB decision that was recently designated precedential, the Board made two important decisions concerning provisional patent...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2023 #3

Baxalta Inc. v. Genentech, Inc., Appeal No. 22-1461 (Fed. Cir. Sept. 20, 2023) Our Case of the Week focuses on the enablement requirement. It’s the first case to come before the Federal Circuit following the Supreme...more

Axinn, Veltrop & Harkrider LLP

Axinn IP Update: Federal Circuit Applies Lead Compound Analysis and Confirms Obviousness of Deuterated Derivatives of Ruxolitinib

On August 22, 2023, the Federal Circuit affirmed an IPR Final Written Decision holding claims to deuterated derivatives of ruxolitinib unpatentable as obvious and rejected the patentee’s argument that a skilled artisan would...more

Sheppard Mullin Richter & Hampton LLP

In re Couvaras, No. 2022-1489 (Fed. Cir. June 14, 2023)

This case addresses obviousness under 35 U.S.C. § 103 in relation to a method of increasing prostacyclin release to reduce hypertension in a patient. In particular, this case discusses issues relating to motivation to...more

McDermott Will & Emery

Absent Nexus Secondary Considerations Come in Second

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Addressing the nexus between a secondary consideration and the claimed invention in assessing obviousness, the US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board finding of nonobviousness...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2023

Yita LLC v. MacNeil IP LLC, Appeal Nos. 2022-1373, -1374 (Fed. Cir. June 6, 2023) In appeals from two inter partes reviews before the Patent Trial and Appeal Board (the Board) on related patents, the Federal Circuit...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2023

Roku, Inc. v. Universal Electronics, Inc., Appeal No. 2022-1058 (Fed. Cir. Mar. 31, 2023) In this week’s Case of the Week, the Federal Circuit affirmed the U.S. Patent Trial and Appeal Board’s (PTAB’s) final written...more

Manatt, Phelps & Phillips, LLP

Error in Prior Art Did Not Render Invention Obvious

In LG Electronics Inc. v. Immervision, Inc., the Federal Circuit held that an obvious error in a prior art reference was not considered a teaching. The court explained that a person of ordinary skill in the art (POSITA) would...more

McDermott Will & Emery

You Can’t Skirt around Obviousness by Arguing Expectation of Success Must Be Absolute

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Affirming an obviousness decision by the Patent Trial & Appeal Board (Board), the US Court of Appeals for the Federal Circuit explained that the expectation of success need only be reasonable and not absolute. Transtex Inc....more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Jones Day

Spoonful of Commercial Success Overcomes Obviousness Rejection

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The Patent Trial and Appeal Board (PTAB) recently reversed obviousness rejections based on an Applicant demonstrating commercial success of an infant spoon, in Ex Parte Doug Gonterman and Jessica Lineberry. The PTAB found...more

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

PTAB Strategies and Insights Newsletter: May 2022: Split Panel Weighs General Skepticism Differently in Obviousness Inquiry

In a recent opinion by the Federal Circuit, Auris Health, Inc. v Intuitive Surgical Operations, Inc., Case 2021-1732, the panel split on the weight of general industry skepticism in an obviousness analysis and split on...more

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

PTAB Strategies and Insights Newsletter: May 2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

McDermott Will & Emery

Robotic Skepticism May Not Trump Motivation to Combine

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The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board (Board) decision finding the challenged claims patentable because the Board impermissibly rested its motivation-to-combine...more

Ruder Ware

You Developed a New Invention – How Do You Determine if it is Patentable?

Ruder Ware on

An invention developed by a business or individual inventor may have great value to that business or individual, either through the commercialization of the invention or by licensing the invention to others in return for a...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Raytheon Technologies Corp. v. General Electric...

General Electric Co. (GE) petitioned for inter partes review (IPR) of claims 3 and 16 of Raytheon Technologies Corp.’s U.S. Patent No. 9,695,751 related to gas turbine engines. The U.S. Patent Trial and Appeal Board (Board)...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

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