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Category: Obviousness
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By Kevin E. Noonan – The Supreme Court most recently revisited the proper standards for making an obviousness determination ten years ago, in KSR Int'l. Co. v. Teleflex. Inc. While in some ways changing the obviousness standard, for example expanding the scope and relevance of analogous art, and clarifying other aspects, such as when being "obvious…
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By Kevin E. Noonan – In something of an anticlimax, Federal Circuit Judge William Bryson, sitting by designation on the bench of the U.S. District Court for the Eastern District of Texas, granted Allergan's motion to join the St. Regis Mohawk Nation to ANDA litigation as a necessary party, and then found claims of the Orange…
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By Kevin E. Noonan – The Patent Trial and Appeal Board (PTAB) gets most of its attention (judicial and otherwise) regarding its decisions in inter partes review and covered business method proceedings. But the Board also has responsibility for deciding ex parte appeals of Examiner rejections that fell within the purview of its predecessor, the Board…
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By Kevin E. Noonan – The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office recently issued a Final Written Decision in an inter partes review styled Mylan Pharm. v. AstraZeneca AB affirming the patentability of all challenged claims. In its opinion, the Board provided a detailed example of how the Office is…
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Telecommunication Call Processing System Held to Be Eligible for Covered Business Method (CBM) Patent Review By Joseph Herndon — On August 3, 2017, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) issued a decision instituting a Covered Business Method (CBM) patent review of U.S. Patent No. 7,783,021. In this case, Securus…
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By Joseph Herndon — On July 27, 2017, the Federal Circuit issued an opinion in Audatex North America, Inc. v. Mitchell International, Inc., upholding the U.S. Patent and Trademark Office Patent Trial and Appeal Board's (PTAB) decision in which all claims of U.S. Patent Nos. 7,912,740 and 8,468,038 were held patent ineligible under 35 U.S.C. §…
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By Kevin E. Noonan – The University of California/Berkeley filed its opening brief to the Federal Circuit last week, asking that Court to overturn the Patent Trial and Appeal Board's decision that there was no interference-in-fact between Berkeley's application and several U.S. patents and applications assigned to The Broad Institute. That decision is entitled to review…
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By Kevin E. Noonan – In multiple ANDA litigations against multiple defendants, Millennium Pharmaceuticals, Inc. had several of its asserted claims held invalid for obviousness at the district court. The Federal Circuit reversed these decisions earlier this week in an opinion styled Millennium Pharmaceuticals, Inc. v. Sandoz Inc. The decision is consistent with recent trends at…
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By Michael Borella — Over the last 18 months, the Federal Circuit has been quietly shoring up the non-obviousness provisions of 35 U.S.C. § 103 by enforcing the requirement that an obviousness argument entails making the full prima facie case. That is, in order to invalidate a claim over two or more prior art references, the…
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By Kevin E. Noonan — Last week, the Federal Circuit completed its review of a series of patents relating to treating Pompe disease and invalidated by inter partes review before the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB), in Duke University v. BioMarin Pharmaceutical Inc. The drug recited in the challenged…
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