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Category: Obviousness
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USPTO's Conclusion of Obviousness Rendered Primary Reference Unsatisfactory for Intended Purpose By Joseph Herndon — In a nonprecedential opinion, the Federal Circuit vacated a decision by the Board and remanded the case on appeal from the USPTO. This appeal arose from a decision of the Patent Trial and Appeal Board in an ex parte reexamination,…
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"Intuitive" to Combine Insufficient to Support Obviousness Rejection By Joseph Herndon — The Federal Circuit recently issued a decision in an appeal from the U.S. Patent and Trademark Office Patent Trial and Appeal Board in a case captioned In re Marcel Van Os, Freddy Allen Anzures, Scott Forstall, Greg Christie, and Imran Chaudhri. The appellants,…
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By Donald Zuhn –- After reflecting upon the events of the past twelve months, Patent Docs presents its tenth annual list of top patent stories. For 2016, we identified twenty stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and…
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By Kevin E. Noonan — In this recent precedential decision, the Federal Circuit vacated and remanded a Patent Trial and Appeal Board decision invalidating claims from Nuvasive's U.S. Patent No. 8,361,156 in an inter partes review instituted on a petition by Medtronic, Inc. In rendering its opinion the Court reiterated the need for the Board…
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By Kevin E. Noonan — Diligence is a patent concept whose applicability was severely restricted under the changes in U.S. patent law created under the Leahy-Smith America Invents Act. Diligence is important when determining whether an invention was invented prior to an act intervening between invention and patent application filing, in a "first-to-invent" regime. There…
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By Donald Zuhn — Last month, in In re Efthymiopoulos, the Federal Circuit affirmed the determination by the U.S. Patent and Trademark Office Patent Trial and Appeal Board affirming the Examiner's rejection of all pending claims of Appellant Constantin Efthymiopoulos's U.S. Patent Application No. 08/737,141 as being obvious. The '141 application relates to methods of…
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By Kevin E. Noonan — Many of the complaints from patent holders over the PTO's inter partes review process under the Leahy-Smith America Invents Act (codified in pertinent part at 35 U.S.C. §§ 311-319) stem from how the Office has implemented these proceedings (at §§ 42.1-42.80 and 42.100-42.123). Genzyme has addressed their complaints about the…
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By Kevin E. Noonan — Perhaps the most significant Supreme Court decision in the past quarter century for the working patent practitioner is Dickinson v. Zurko, which strictly speaking is less a patent case than an administrative law decision. But every day the question of whether a party can successfully challenge a U.S. Patent and…
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By Michael Borella — McClinton Energy Group filed an inter partes review (IPR) petition against all claims of U.S. Patent No. 8,079,413, owned by Magnum Oil Tools International, Ltd. The USPTO's Patent Trial and Appeal Board (PTAB) instituted the IPR, and eventually rendered a final decision finding that all challenged claims of the '413 patent…
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By Kevin E. Noonan — The Federal Circuit affirmed the decision by the Patent Trial and Appeals Board (PTAB) in an inter partes review (IPR) that the claims of Genzyme's U.S Patent Nos. 7,351,410 and 7,655,226 were obvious, in Genzyme Therapeutic Products, Inc. v. Biomarin Pharmaceutical, Inc. The claims at issue are directed to methods…
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