Topic
Obviousness
205 published works
PTABWatch
Intuitive to Use Versus Use of an Element for its Intended Purpose – Is There a Difference?
Is there a difference between saying that it would be intuitive to use the features of one prior art reference in combination with another, versus saying that such a combination…
PTABWatch
Federal Circuit to PTAB (Once Again) – Explain Yourself!!!
The Federal Circuit has once again vacated and remanded a PTAB decision on the basis that the PTAB did not adequately explain its reasons for finding a claimed invention obvious,…
PTABWatch
Federal Circuit to PTAB (Again) – Explain Yourself!!
The Federal Circuit has once again vacated and remanded a PTAB final written decision on the basis that the PTAB did not adequately explain its reasons for finding a claimed…
PTABWatch
PTAB Cancels Gattax® Patent Claims in Coalition for Affordable Drugs IPRs
In two final written decisions (IPR2015-01093 and IPR2015-00990), the PTAB found that challenged claims in Shire’s U.S. Patent No. 7,056,886 (the ’886 patent) were invalid as obvious. The decisions highlight…
PTABWatch
Ignore Occam’s Razor at your Peril
In IPR 2015-01127, PAR Pharmaceuticals, challenged claims 1-11 of USPN 8,404,215 owned by Horizon Therapeutics, LLC on grounds of obviousness over various combinations of six references. Lupin Ltd. and Lupin…
Prosecution First Blog
Ex Parte Jellá: Post-KSR: Design Need or Market Pressure to Solve a Problem as Common Sense, Not Innovation
Ex parte Jellá, Appeal 2008-1619 (November 3, 2008)Read more
Delaware Intellectual Property Litigation
Judge Andrews Concludes that Defendants Failed to Prove Affirmative Defenses of Obviousness and Implied License in ANDA Action
By Trial Opinion entered by The Honorable Richard G. Andrews, following a bench trial, in Endo Pharmaceuticals Inc. et al. v. Amneal Pharmaceuticals, LLC et al., Civil Action No. 14-1382-RGA…
Patent Challenges
Federal Circuit Rejects PTAB’s Reliance on “Common Sense” to Supply Missing Claim Limitation
In Arendi S.A.R.I. v. Apple Inc., et al., the Federal Circuit reversed a PTAB decision finding all instituted claims in an IPR invalid as obvious based on the prior art…
PTABWatch
PTAB Accords Little Weight to Evidence without Analysis or Explanation
The PTAB recently issued a final written decision in an inter partes review (IPR), refusing to cancel claims in Verinata Health, Inc.’s U.S. Patent No. 8,318,430. Ariosa Diagnostics v. Verinata…
PTABWatch
Federal Circuit Identifies Limits to the Application of “Common Sense” in an Obviousness Analysis
In Arendi S.A.R.L. v. Apple, Inc., Appeal No. 2015-2073 (Fed. Cir. 2016), the Federal Circuit reversed the PTAB’s final written decision canceling claims for obviousness, on the basis that the…