Topic
Obviousness
205 published works
PTABWatch
PTAB’s Obviousness Analysis Inconsistent with KSR
In a decision issued on May 5, 2020, the Federal Circuit reversed a PTAB decision upholding patent claims challenged for obviousness. Uber Technologies, Inc. v. X One, Inc., 957 F.3d…
Prosecution First Blog
A Non-Precedential Case Study: Federal Circuit Says District Court Did Not Clearly Err in Holding Dosing Patent Invalid Based on Obviousness and Obviousness Type Double Patenting
By Publisher
Holding: In Boehringer Ingelheim Pharms. Inc. v. Mylan Pharms. Inc., No. 2019-1172 (Fed. Cir. March 16, 2020) (non-precedential), the Federal Circuit upheld the district court’s finding of invalidity of certain…
IP Update
The “Plotting” Thickens: Claims that Solve Known Problem with Known Methods Are Obvious
The US Court of Appeals for the Federal Circuit applied KSR and its obviousness progeny, finding that patent claims directed to location plotting were obvious under 35 USC § 103.…
IP Update
“Non-Limiting” Prior Art Claims Support Obviousness After Standing Is Established
By Mandy H. Kim
Addressing the issue of Article III standing and obviousness in an appeal of an inter partes review (IPR) decision, the US Court of Appeals for the Federal Circuit found that…
IP Update
Emmy Award to the Rescue – Secondary Considerations Overcome Prior Art
The Patent Trial and Appeal Board (Board), in a decision designated as precedential, found that a Patent Owner’s substitute claims were patentable in view of evidence of secondary considerations even…
IP Update
No Summary Judgment Where Primary Reference Might Not Be “Basically the Same” as Asserted Design Patent
The US Court of Appeals for the Federal Circuit found that the district court improperly resolved a genuine dispute of material fact with respect to summary judgment of invalidity for…
IP Update
Prima Facie Obviousness Established Where Claimed pH Range Overlaps with Prior Art Range for Similar Compounds
By Mandy H. Kim
The US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment that found a patent was not obvious because the claimed pH range would not have…
Global IP & Technology Law Blog
Federal Circuit Extends Potential Reach of Chemical Compound Structural Similarity Obviousness Law
In Valeant Pharmaceuticals Int’l, Inc. v. Mylan Pharmaceuticals Inc., No. 2018-2097 (Fed. Cir. April 8, 2020), the Federal Circuit was asked “whether prior art ranges for solutions of structurally and…
Big Molecule Watch
U.S. Court of Appeals for the Federal Circuit Issued Two Rulings in Biosimilar-Related Appeals
This week, the U.S. Court of Appeals for the Federal Circuit issued two rulings in biosimilar-related appeals from final written decisions by the Patent Trial and Appeal Board (PTAB) in…
PTABWatch
Federal Circuit Affirms Use of “Common Sense” in IPRs
In Koninklijke Philips N.V. v. Google LLC, Case No. 2019-1177 (Fed. Cir. January 30, 2020), the Federal Circuit determined that the Board erred in instituting inter partes review based on…