Topic
Obviousness
205 published works
PTABWatch
Federal Circuit Rejects Presumption of Nexus Between Claimed Invention and Evidence of Secondary Factors
In FOX Factory, Inc. v. SRAM, LLC, Case Nos. 2018-2024, 2018-2025 (Fed. Cir. December 18, 2019), the Federal Circuit determined that the Board erroneously presumed a nexus between evidence of…
The IP Law Blog
Copying by Competitors is Evidence of Nonobviousness of an Invention
The Patent and Trademark Office (PTO) may reject a patent application on several different grounds. One of those grounds is obviousness. Under 35 U.S.C. § 103, if an invention is…
IP Update
Inherency Can Be Used in Obviousness Analysis to Supply Missing Limitation
Finding that inherency can be used to show the presence of a missing claim limitation, the US Court of Appeals for the Federal Circuit affirmed a district court decision that…
Prosecution First Blog
A Belated Lesson in How to Avoid a Finding of Obviousness Based Upon Inherent Disclosure
Decision: Persion Pharms. LLC v. Alvogen Malta Operations Ltd., No. 2018-2361 (Fed. Cir. Dec. 27, 2019) (REYNA, O’Malley, Chen) Holding: The District Court of Delaware held Persion’s claims invalid for…
PTAB Law Blog
Federal Circuit Raises the Standard of Nexus Requirement for Secondary Indicia of Non-Obviousness
The Federal Circuit recently addressed the requirement for establishing “nexus” for secondary indicia. On December 18, 2019, the Court of Appeals for the Federal Circuit (the “Federal Circuit”) vacated and…
Patents Post-Grant
Critical Aspects of Invention Need to Be Claimed for Secondary Indicia to Stick
By Scott McKeown, Scott McKeown Wolf Greenfield
CAFC Faults PTAB Nexus Presumption A proper obviousness analysis under Graham v. John Deere analyzes four factors: (1) the scope and content of the prior art; (2) the differences between the prior…
IP Intelligence
Federal Circuit Holds Lack of Efficacy Data Defeats ‘Substantial Evidence’ Showing of a Reasonable Expectation of Success Needed To Support PTAB’S Finding of Obviousness
In a precedential opinion, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of obviousness invalidating a patent’s method claims for administering a drug for treating non-small…
Patents Post-Grant
PTAB Denies Petition Overlooking Objective Indicia of Non-Obviousness
By Scott McKeown, Scott McKeown Wolf Greenfield
Unrebutted Secondary Indicia Considered in Assessing Becton-Dickinson Factors The submission of so-called "objective indicia of non-obviousness" at the PTAB is rarely effective, especially in the predictable arts (i.e., mechanical/electrical). This is because…
PTABWatch
Federal Circuit Affirms Obviousness Decision by Board, No Violation
In Smith & Nephew, Inc. v. Arthrocare Corp., Appeal No. IPR2016-00918 (Fed. Cir. Aug. 21, 2019), the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision in an IPR…
Prosecution First Blog
The Amazing Story of the Unsinkable Claim 8: How Many Lives Does a Patent Claim Have?
Decision: Mylan Pharmaceuticals Inc. v. Research Corporation Technologies, Inc., 914 F.3d 1366 (Fed. Cir. 2019) (LOURIE, Bryson, Wallach) Holding: The Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB”)…