Topic
Obviousness
205 published works
Harness Dickey Blog
Intrinsic Evidence > Dictionary Definitions, Analogies, and Purported Plain Meaning
By Todd
In Uniloc 2017 LLC v. Apple Inc., [2020-1403, 2020-1404] (May 12, 2021), the Federal Circuit affirmed the PTAB determination that claims 1 – 17 and 23 – 25 of U.S. Patent No.…
Global IP & Technology Law Blog
Beware! Reliance on Aspirational and Futuristic Statements in a Prior Art Reference May Require Supporting Evidence
In patent disputes involving complex technologies, especially when the disputed patent was developed in an early stage of the technical field, research papers and similar publications are oftentimes relied on…
Patents Post-Grant
Aspirational Prior Art Disclosures & Enablement
By Scott McKeown, Scott McKeown Wolf Greenfield
Frequent Losing Argument at the PTAB Finds Rare Exception A common losing argument at the PTAB is that a reference used in an obviousness combination is non-enabling. The reason this…
Harness Dickey Blog
Hindsight May be 20-20, but it has no Place in Evaluating Obviousness
In Gillette Co. v. S.C. Johnson & Son, Inc., 919 F.2d 720, 16 U.S.P.Q.2d 1923 (Fed. Cir. 1990), the Federal Circuit affirmed the district court’s determination that U.S. Patent No. 3,541,581…
The IP Law Blog
More Ways to Overcome Obviousness
In my last column, I discussed the first argument that should be made in overcoming an obviousness rejection made by the patent examiner in a patent application. If possible, the…
The IP Law Blog
Arguing Obviousness with the Patent Examiner
Most patent applications are initially rejected on obviousness grounds by the patent examiner in the US Patent and Trademark Office. That means that the examiner believes that the invention, as…
The IP Law Blog
Arguing Obviousness with the Patent Examiner
Most patent applications are initially rejected on obviousness grounds by the patent examiner in the US Patent and Trademark Office. That means that the examiner believes that the invention, as…
PTAB Law Blog
The Federal Circuit Issues Decision Clarifying the Qualifying Test for Analogous Art
On November 9, 2020, the Federal Circuit vacated and remanded a decision by the United States Patent Office Patent Trial and Appeal Board (“PTAB”) in Donner Tech., LLC v. Pro…
Harness Dickey Blog
Petitioner Can Substantiate Prior Art When Challenged by Patent Owner
In Vidstream LLC v. Twitter, Inc., [2019-1734, 2019-1735] (November 25, 2020) the Federals Circuit affirmed the PTAB determination that claims 1-35 of U.S. Patent No. 9,083,997 on Recording and Publishing Content…
Harness Dickey Blog
Finding Claims Non-obvious Was Not Error, It Was the Application of the Proper Evidentiary Standard
In Apple Inc. v. VOIP-PAL.com, Inc., [2018-1456, 2018-1457] (September 25, 2020), the Federal Circuit affirmed the PTAB’s determination that claims of U.S. Patent No. 8,542,815 and 9,179,005 were not invalid…