Patent Law Weblog
recent posts
- Apple v. Squires: USPTO Director Has Unlimited Discretion on IPR Institution
- The Ghost in the Machine: Why GenAI Can Be Both a Brilliant Researcher and a Terrible Advocate
- Bayer Files Suit Against Trio of COVID-19 Vaccine Makers
- Allen v. Cooper (4th Cir. 2026)
- To Require an Inventor ID, or Not to Require an Inventor ID – That Is the Question
about
Category: Obviousness
-
By Andrew Williams — Have you ever mixed up the obviousness determinations of "motivation to combine" and "reasonable expectation of success"? If so, you are apparently not alone — the Federal Circuit recently faulted the Patent Trial and Appeal Board of doing just that. In Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., the Court reviewed…
-
By Kevin E. Noonan — The Federal Circuit and the Supreme Court spent an inordinate amount of time wrestling with each of their conceptions of the scope and application of the doctrine of equivalents a dozen years ago, coming to an accommodation in the last of the Federal Circuit's decisions in Festo Corp. v. Shoketsu…
-
By Kevin E. Noonan — Early last month, the Federal Circuit addressed an important question regarding the interplay between a decision to institute inter partes review before the Patent Trial and Appeal Board and the ultimate determination by the Board regarding whether claims are invalid for the reasons contained in the petition, in TriVascular v.…
-
By Kevin E. Noonan — Last Thursday, the Federal Circuit handed down its non-precedential decision in Purdue Pharma v. Depomed, reviewing the decision of the Patent Trial and Appeal Board on three related inter partes reviews. While not quite a unicorn, the PTAB decision was unusual in that it affirmed the validity of all claims…
-
By Kevin E. Noonan — The Federal Circuit affirmed a decision of obviousness, and that a patentee not be able to amend claims in an inter partes review proceeding, in an opinion handed down January 29th in Illumina Cambridge Ltd. v. Intelligent Bio-Systems, Inc. The opinion (or rather the description of the Board's procedures and…
-
By Andrew Williams — Back in January 2002, when this author was near the beginning of his patent law career, the Federal Circuit handed down the In re Sang-Su Lee case. Among other things, this case provided patent practitioners with support for challenging examiners that failed to identify the evidence on which they were relying. …
-
The PTAB at the Federal Circuit — Supplemental Evidence Edition By Andrew Williams — On New Year's Eve, the Federal Circuit affirmed the PTAB's denial of a motion to submit supplemental evidence pursuant to 37 C.F.R. § 42.123(a), notwithstanding the fact that the motion was timely filed and relevant. In Redline Detection, LLC v. Star…
-
By Kevin E. Noonan — The Supreme Court on Friday granted certiorari to review the Federal Circuit's decision that the U.S. Patent and Trademark's Patent Trial and Appeal Board was entitled to perform claim construction in inter partes review proceedings using the broadest reasonable interpretation standard. This case, Cuozzo Speed Technologies, LLC v. Lee, has…
-
By Kevin E. Noonan — Mistakes happen; there is even a book, entitled Human Error, that discusses how and why they happen. The Federal Circuit addressed the consequences of human error (or perhaps more accurately, instances where there was a less-than-perfect understanding of the chemical structure of a claimed invention) in a surprisingly lenient fashion…
-
Prolitec Inc. v. Scentair Technologies, Inc. (Fed. Cir. 2015) By Andrew Williams — In another unsurprising turn, the Federal Circuit affirmed the motion-to-amend practice adopted by the PTAB in IPR proceedings. The majority opinion in Prolitec Inc. v. Scentair Technologies, Inc., authored by Chief Judge Prost, concluded (among other things) that the Board's approach of…
Patent Docs 