Topic
Obviousness
205 published works
ILN IP Insider
BLOCKING PATENTS CAN MOOT OBJECTIVE INDICIA OF NON-OBVIOUSNESS
In a recent precedential decision, a split Federal Circuit (Judges Dyk and Taranto in the majority, Judge Newman, dissenting) issued a lengthy, 53-page decision, regarding the obviousness doctrine. Judge Taranto,…
Prosecution First Blog
Informative One Day, Non-Informative the Next
PTAB Decision: Ex parte Jung, Appeal No. 2016-008290 (P.T.A.B. March 22, 2017) Background: The USPTO designated Ex parte Jung, Appeal No. 2016-008290 (P.T.A.B. March 22, 2017), as “informative” on July…
PTABWatch
PTAB Was Wrong to Ignore an Applicant’s Prosecution Disclaimer Because of Examiner’s Reasons for Allowance
Despite disagreeing with the PTAB’s preferred claim construction, the Federal Circuit in Arendi S.A.R.L. v. Google LLC, Case No. 2016-1249 (Fed. Cir. Feb. 20, 2018) nevertheless determined that the PTAB…
Life Science Legal Report
Hindsight Is Not 20/20: PTAB Technology Center 1600 Decision Round-Up: Week of May 28 – June 1, 2018
At the end of a week shortened by the Memorial Day holiday, the PTAB (“Board”) issued just two decisions in Technology Center (TC) 1600 during the week of May 28. …
PTAB Law Blog
How Creative is One of Ordinary Skill – DSS Tech. Mgmt. v. Apple Inc.
In an attempt to challenge the patentability of an issued claim, petitioners every so often come across a prior art reference that discloses all the recited features of the claim…
PTABWatch
Rituxan Patent Spared by Failure to Establish Product Label as “Printed Publication”
A patent relating to a method of treating rheumatoid arthritis using rituximab recently survived its fourth IPR challenge. Celltrion, Inc. v. Biogen, Inc., IPR2016-01614 (PTAB Feb. 21, 2018). The PTAB…
PTABWatch
Petitioner Failed to Show That Patent Owner’s Drug Product Package Insert Was a Printed Publication
On February 9, 2018, the PTAB denied Sandoz Inc.’s petition for inter partes review of U.S. Patent No. 9,512,216, a patent owned by AbbVie Biotechnology Ltd. The patent recites methods…
PTABWatch
PTAB Gets A Math Lesson
In Shinn Fu Co. of America, Inc. v. The Tire Hanger Corp., Dkt. No. 2016-2250 (Fed. Cir. July 3, 2017), Shinn Fu appealed the Board’s holding in IPR2015-00208 (discussed here),…
PTAB Law Blog
Federal Circuit Revives Polaris’ Claims After PTAB’s Obviousness Analysis Veers Off Course
On February 9, 2018, in vacating and remanding parts of an obviousness decision, the Federal Circuit found that the Patent Trial and Appeal Board (“PTAB” or “the Board”) erred in…
PTABWatch
PTAB Should Have Considered Argument Raised in “Redundant,” Non-instituted Ground
In CRFD Research Ltd. v. Matal, No. 2016-2198 (Fed. Cir. Dec. 5, 2017), the Federal Circuit determined that the PTAB erred in its obviousness analysis, in part by failing to…