Topic
Obviousness
205 published works
PostGrant-Counsel Blog
When Can Common Sense be Relied Upon to Find an Invention Obvious?
All patent practitioners recognize that a single prior art reference can be used to reject claims in an obviousness rejection. However, the issue is whether the Patent Office must provide…
IP Intelligence
Federal Circuit Provides Guidance on Use of Common Sense in Obviousness Analysis
By Sarah Dukmen
Last week, in Arendi S.A.R.L. v. Apple, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of invalidity in an inter partes review that relied on “common…
PTAB Law Blog
Limits on Use of “Common Sense” – Arendi S.A.R.L. v. Apple Inc., et al.,
By Daniel R. McCallum, Nancy J. Linck
The Federal Circuit’s precedential opinion in Arendi S.A.R.L. v. Apple Inc., et al., Case No. 2015-2016 (Aug. 10, 2016) is instructive on the limits of “common sense” in an obviousness…
PTABWatch
Secondary Considerations Change Panel’s Mind after Institution
The PTAB is not often persuaded by objective evidence of non-obviousness, i.e., secondary considerations, when the scope and content of the prior art includes all of the features recited in…
PTAB Law Blog
Overburdened: Federal Circuit Reverses Based On PTAB’s Improper Shifting Of Burden To Patent Owner
By Martin M. Zoltick, Caitlin M. Wilmot
On July 25, 2016, in In re Magnum Oil Tools Int’l, Ltd., Case No. 2015-1300, the Federal Circuit clarified the respective burdens carried by both the petitioner and the patentee…
PTABWatch
Federal Circuit to PTAB – Explain yourself!!
The Federal Circuit recently vacated or reversed-in-part two PTAB final written decisions on the basis that the PTAB did not adequately describe its reasons for concluding the claimed invention is…
PTABWatch
Federal Circuit Upholds Rule that New Petitioner Arguments Cannot Be Raised in IPR Reply Briefs
The Federal Circuit recently affirmed the Board’s IPR decision that IBS failed to satisfy its burden of demonstrating obviousness of the challenged claims of Illumina’s U.S. Patent No. 7,566,537 (“the…
BioLoquitur
Federal Circuit Affirms PTAB’s Nonobvious Ruling While Clarifying the Motivation to Combine and Reasonable Expectation of Success Requirements
On May 9, 2016, the U.S. Court of Appeals for the Federal Circuit upheld the U.S. Patent and Trademark Office (PTO) Patent Trial and Appeal Board (PTAB) inter partes review…
PTABWatch
Supporting Evidence, Not Counter-Punching, May Be Needed In An IPR
In IPR2015-01537, Momenta petitioned for IPR of claims 1-15 of U.S. Patent No. 8,476,239 owned by Bristol-Myers Squibb (BMS) on grounds of obviousness over three references: Cohen, Shire, and Carpenter. …
Delaware Intellectual Property Litigation
Judge Sleet Denies Defendants’ Post-Trial Proposed Finding of Invalidity of Patents-in-Suit Due To Obviousness
By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Pfizer Inc. v. Sandoz Inc., et al., Civil Action No. 13-110-GMS (D.Del., Apr. 20, 2016), the Court denied defendants’…