Patent Law Weblog
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Category: Obviousness
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Acting as Lexicographers Saves Patent from Being Found Invalid By Joseph Herndon — In a recent Federal Circuit decision, the Court highlighted an old rule in that the inventors may act as their own lexicographers to create a claim term and define the term accordingly. Here, a U.S. patent directed to user interface functionality on…
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By Andrew Williams — Can a prior art reference that does not contain a teaching sufficient enough to allow it to be used in an obviousness combination nevertheless be used as a background reference for evidence of motivation to combine? Moreover, does it matter if an adjudicating body had concluded earlier in a proceeding that…
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By Andrew Williams — In inter partes review proceedings, is the U.S. Patent and Trademark Office's Patent Trial and Appeal Board required to take into account a final district court determination of non-obviousness of the same claims based on the same prior art? In Novartis AG v. Noven Pharmaceuticals Inc., the Federal Circuit responded in…
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By Donald Zuhn — Last month, in In re Depomed, Inc., the Federal Circuit affirmed the determination by the U.S. Patent and Trademark Office Patent Trial and Appeal Board that two instituted grounds in an inter partes review rendered claims 1, 3-5, and 10-13 of Depomed's U.S. Patent No. 6,723,340 unpatentable as obvious. The '340…
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By Kevin E. Noonan — The Federal Circuit handed down two related opinions last week, Los Angeles Biomedical Research Institute v. Eli Lilly & Co. and Eli Lilly & Co. v. Los Angeles Biomedical Research Institute, one of which raised the question of whether (and when) it is appropriate for the Court to remand decisions…
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Federal Circuit Finds That USPTO Board Interpreted CBM Statute Too Broadly By Joseph Herndon — In an appeal of a Covered Business Method (CBM) patent review, the Federal Circuit overturned a decision by the U.S. Patent and Trademark Office's Patent Trial and Appeal Board that U.S. Patent No. 7,631,191 is a CBM patent, and vacated…
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By Kevin E. Noonan — In an otherwise unremarkable albeit precedential decision, the Federal Circuit set forth an explication of when the Patent Trial and Appeal Board has, and has not, given the court enough information to determine whether its factual determinations are supported by substantial evidence. And in its decision handed down today in…
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By Kevin E. Noonan — Yesterday, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office rendered judgment that there was no interference-in-fact between the claims in interference between the Regents of the University of California/Berkeley and the Broad Institute. Shortly after this judgment appeared, the Board issued its "Decision on…
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By Michael Borella — Apple filed a successful petition for Inter Partes Review (IPR) of Personal Web Technologies' U.S. Patent No. 7,802,310. In its final written decision, the Patent Trial and Appeal Board (PTAB) agreed with Apple's contention that the claims of the '310 patent were obvious. On appeal, the Federal Circuit reversed. Obviousness is one…
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By Kevin E. Noonan — From the nadir of the Supreme Court's allegations that the Federal Circuit "fundamentally misunderstood" the law of inducing infringement in Limelight Networks, Inc. v. Akamai Technologies, Inc., the nation's specialized patent appellate court has crafted a two-prong test for assessing when the actions of more than a single actor amount…
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