Topic
Obviousness
205 published works
PTABWatch
Secondary Considerations Error Does Not Warrant Reversal
As we’ve previously reported, patent owners have had little success arguing secondary considerations of non-obviousness during inter partes review. Underscoring the challenge that patent owners face, the Federal Circuit recently…
PTABWatch
Federal Circuit Affirms PTAB’s Victory on Invalidity Ground the Petition Did Not Even Present
In SightSound Techs., LLC v. Apple Inc., Appeal Nos. 2015-1159, -1160 (Fed. Cir. Dec. 15, 2015), the Federal Circuit affirmed the PTAB’s final written decisions in two CBM patent review…
BioLoquitur
Getting it Right the First Time in IPR Petitions: Ariosa v. Verinata
The Federal Circuit vacated the PTAB's finding of nonobviousness of Verinata's patent directed to methods of noninvasive prenatal testing, and remanded the case back to the Board. The Federal Circuit…
IP Intelligence
Methods of treating a subset of patients are likely nonobvious if the subset exhibits unexpected results
By Ron Kern
In Prometheus Laboratories, Inc. v. Roxane Laboratories, Inc.,[1] a recent decision involving methods of treating a specific subset of patients, the Court of Appeals for the Federal Circuit (“Federal Circuit”)…
Patents Post-Grant
Secondary Considerations More Effective in Unpredictable Arts
Secondary Indicia of Greater Value in Bio/Pharma The submission of objective evidence of non-obviousness is rarely effective in the predictable arts (i.e., mechanical/electrical). This is because such evidence must have a "nexus"…
BioLoquitur
Shire v. Amneal – Compound Claim Not Obvious and API Supplier Not Liable Under FDA Safe Harbor
The Federal Circuit in Shire v. Amneal, a Hatch-Waxman case, reaffirmed that the burden rests with the defendants to prove motivation for a person of ordinary skill in the art…
BioLoquitur
Teaching Away Negated by References Disclosing How to Offset Disadvantages
The Federal Circuit, in Dome Patent L.P. v. Lee, further clarified the standard for a person of ordinary skill in the art’s motivation in deciding obviousness contentions under U.S.C. §103(a).…
PTABWatch
Put Away The Blunderbuss – Attention to Detail and Thoroughness Are Needed in Preparing an IPR Petition
Boehringer Ingelheim filed three petitions attacking patents generally drawn to methods of treating RA patients with rituximab. The decisions on two of those petitions, i.e., IPR2015-00415 and IPR2015-00417, have been…
PTABWatch
Grinning Patentees Get A Mulligan
Filed concurrently with the petitions at issue in IPR2015-00417 and IPR2015-00418, Boehringer Ingelheim filed the petition at issue in IPR2015-00415 seeking review of U.S. Patent No. 7,820,161 owned by Genentech…
Patent Challenges
PTAB finds patent non-obvious based on secondary considerations
In Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd., the PTAB found that the patented invention was not obvious based on the secondary considerations of commercial success and copying,…