Topic
Obviousness
205 published works
Federal Circuit Weekly
Federal Circuit Remands Patents Back to Board for Further Proceedings Regarding Challenges to Patents’ Validity Based on Anticipation and Obviousness
In a nonprecedential decision, the Federal Circuit ruled that the Patent Trial and Appeal Board had (1) failed to address a specific anticipation argument raised by a petitioner and (2)…
PTABWatch
PTAB Not Always Bound By Previous Court Decisions Regarding Patent Validity
By Katherine L. Neville, Ph.D.
In Novartis AG v. Noven Pharm. Inc., Appeal 2016-1678-1679 (April 2017), Novartis appealed two PTAB decisions holding claims of two patents obvious over cited prior art (IPR2014-00549 and IPR2014-00550), arguing…
IP Intelligence
Federal Circuit Splits on Approach to Analyzing Graham Factors
By Wade Haaland, Allen Sokal, David Farsiou
In Merck Sharp & Dohme Corp. v. Hospira, Inc.,[1] the Federal Circuit affirmed the lower court’s ruling that the asserted claims of Merck’s U.S. Patent No. 6,486,150 (the ’150 patent)…
PTABWatch
Assertion of “Routine Optimization” Without Additional Reasoning Insufficient to Support Obviousness Conclusion
Recent Federal Circuit decisions reversing or remanding PTAB holdings of obviousness have faulted the Board for failing to clearly articulate its reasoning. See our previous posts here and here. In…
PTABWatch
Adding Two More to the List of Serious Questions about AIA Trials
In a routine AIA trial, the PTAB determined that challenged claims in a patent directed to HVAC systems were unpatentable as being obvious and anticipated by prior art. This trial…
PTABWatch
Secondary Considerations Again Fail to Shore Up Patent Estate
In IPR 2016-00036, a Bosch windshield wiper patent succumbed to Costco’s challenge on grounds of obviousness. In its final written decision, the Board held claims 13, 17, and 18 of…
PostGrant-Counsel Blog
Federal Circuit Criticizes PTAB for Failing to Properly Weigh Objective Evidence of Non-Obviousness
The Federal Circuit Court of Appeals again vacated a Patent Trial and Appeal Board (PTAB) panel decision for failing to properly evaluate “objective evidence of non-obviousness” and remanded the case…
PTABWatch
PTAB’s Conclusion of Obviousness Overturned as Lacking Sufficient Justification
In In re Schweickert, No. 2016-1266 (Fed. Cir. 2017), the Federal Circuit in a non-precedential opinion vacated the PTAB’s decision canceling patent claims in an ex parte reexamination as being…
PTAB Law Blog
Federal Circuit Vacates Another PTAB Decision Based on a Lack of Adequate Explanation
A failure to provide an adequate explanation for findings of obviousness is becoming the Federal Circuit’s recurring rationale for vacating decisions by the Patent Trial and Appeal Board. In recent…
PTABWatch
Evidence of Secondary Considerations Fails to Establish Nexus to Challenged Claims
In IPR 2016-00039, Costco challenged claims 1, 12 and 14 of USPN 7,228,588 owned by Bosch and drawn to beam (non-yoked) windshield wipers with spoilers to keep the wipers in…