Topic
Obviousness
205 published works
Protecting the Product
Uncertainty Ahead if Design Patent Obviousness Test is Abrogated by <em>en banc </em>CAFC
In a surprising move, the Court of Appeals for the Federal Circuit (“CAFC”) has granted a petition for rehearing en banc on the issue of whether the test for determining…
IP Litigation Current
Full Federal Circuit Set to Consider Changing the Test for Obviousness of Design Patents
By Andrew M. Gross, Gabriella M. Salek
Last week, the Federal Circuit decided to consider, en banc, whether the Supreme Court’s 2007 KSR decision regarding obviousness overruled the Federal Circuit’s decades-old Rosen and Durling tests for design…
PTABWatch
Petitioner’s Analogous Art Argument was not so Obvious when Reversing the PTAB
In Sanofi-Aventis Deutschland GMBH v. Mylan Pharms, Inc., No. 21-1981 (Fed. Cir. May 9, 2023), the Federal Circuit reversed the PTAB’s finding that Sanofi’s patent claims were obvious, determining the…
PTABWatch
PTAB Invalidates GUI, but Leaves Obviousness Test Gooey
On February 9, 2023 the PTAB issued a Final Written Decision in Early Warning Services, LLC and Samsung Electronics Co., Ltd. v. WePay Global Payments LLC, determining the design claim…
Patent Challenges
A “known technique” only needs to be a suitable replacement to support a conclusion of obviousness
By Michael Pohl (US), Vlada Wendel (US)
A claim that recites a combination of prior art elements may be obvious when the combination merely involves the use of a “known technique” that “has been used to improve…
The IP Law Blog
Obviousness Test for Design Patents Unchanged
Design patents and utility patents are two different things. Design patents protect ornamental designs, such as the shape of a perfume bottle or the design on flatware. Utility patents protect…
Prosecution First Blog
Distinct Elements or Parts of a Whole? Obviousness Challenge Denied in SolarEdge Techs., Inc. v. Fronius Int’l GMBH
By Publisher
In SolarEdge Techs., Inc. v. Fronius Int’l GMBH, No. IPR2022-00849 (P.T.A.B. Oct. 21, 2022), the Patent Trial and Appeal Board (“PTAB”) denied institution of inter partes review challenging U.S. Patent…
Gadgets, Gigabytes & Goodwill Blog
Predicting the Unpredictable – When is a Combination Obvious?
Judge Markey famously wrote “Only God works from nothing. Man must work with old elements.” Howard T. Markey, Why Not the Statute?, 65 J. PAT. OFF. SOC’Y 331, 334 (1983).…
Prosecution First Blog
Whither the CCPA? Hindsight is 20/20: Examining CCPA Decisions and Their Continued Importance in Modern Obviousness Inquiries
By Publisher
In United States patent law, a patent may not be obtained on a claimed invention if the differences between the claimed invention and the prior art are such that the…
PTABWatch
No design patents for you!–Extension of Fox Factory Complicates Reliance on Indicia of Non-Obviousness
In Campbell Soup Co. v. Gamon Plus, Inc., the Federal Circuit reversed the PTAB’s finding that Gamon’s design patents on gravity-fed displays for soup were non-obvious. 10 F.4th 1268 (Fed.…