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Category: Obviousness
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By Kevin E. Noonan — Determining obviousness is always a reconstruction, imperfectly done, of a past that never was. The prior art is consulted and the question asked, would the worker of ordinary skill in the art have been able to achieve the claimed invention with a reasonable expectation of success? Of course, this question…
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By Joseph Herndon — Luminara Worldwide, LLC appealed from three inter partes review (IPR) decisions, in which the Patent Trial and Appeal Board held unpatentable a total of 31 claims across Luminara's three patents. On appeal, Luminara challenged the Board's decisions as to one claim from each patent and asserted that the Board's application of…
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By Donald Zuhn — Last month, in Endo Pharmaceuticals Solutions, Inc. v. Custopharm Inc., the Federal Circuit affirmed a decision by the U.S. District Court for the District of Delaware finding that Defendant-Appellant Custopharm Inc. had not proven that claim 2 of U.S. Patent No. 7,718,640 or claim 18 of U.S. Patent No. 8,338,395 were…
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Shapes and Shading of Graphical User Interface Not Enough to Uphold Validity By Joseph Herndon — In a nonprecedential decision, the Federal Circuit found all challenged claims directed to a graphical user interface of a U.S. Patent obvious over a combination of prior art. Valmont Industries, Inc. appealed from the final decision of the Patent…
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By Kevin E. Noonan — Last week, the Federal Circuit found all patent claims invalid for obviousness in an inter partes review, in Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd. But the Court did not render its decision without engendering a judicial disagreement between the majority and Judge Newman on the proper role…
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By Donald Zuhn — On Monday, the Federal Circuit affirmed the determination by the U.S. Patent and Trademark Office's Patent Trial and Appeal Board in an inter partes review that claim 6 of U.S. Patent No. 7,582,621 is unpatentable for obviousness. On appeal, Anacor Pharmaceuticals, Inc., the assignee of the '621 patent, challenged the Board's…
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By Michael Borella — Apple filed two petitions for inter partes review (IPR) against DSS's U.S. Patent No. 6,128,290. The Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office instituted the IPRs and issued final written decisions holding claims 1-4 and 9-10 of the '290 patent obvious. DSS appealed. Claim 1 of…
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By Donald Zuhn — In an appeal decided last month, the Federal Circuit affirmed a decision by the District Court for the Southern District of Indiana finding claim 20 of U.S. Patent No. 8,435,944 to be invalid as obvious. The panel also affirmed the District Court's finding that claims 9 and 10 of U.S. Patent…
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By Kevin E. Noonan – The Federal Circuit reversed a finding of non-obviousness on Friday based on clear error by the District Court on factual underpinnings of its obviousness determination, in Bayer Pharma AG v. Watson Laboratories, Inc. Such decisions are rare, in view of the relevant standard of review. The standard of review after a…
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By Kevin E. Noonan – The Federal Circuit continues its explication of the law of obviousness post-KSR Int'l. v. Teleflex Inc. (and Judge Pauline Newman continues to disagree with her brethren in some regards) in a decision handed down last Friday, in Merck Sharp & Dohme Corp. v. Hospira, Inc. The case arose in an ANDA…
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