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
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Category: Obviousness
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MCM Portfolio LLC v. Hewlett-Packard Co. (Fed. Cir. 2015) By Andrew Williams — In a decision that likely came as no surprise to anyone, the Federal Circuit upheld the constitutionality of IPR proceedings as provided for by the America Invents Act. With an analysis of two pre-1900 Supreme Court cases (as well as citations to…
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By Andrew Williams — Do you want the good news or the bad news first? Well, the good news is that the Federal Circuit has begun reversing PTAB decisions on the merits for IPR proceedings. To be fair, in the Microsoft case, the Federal Circuit remanded because the claim construction was not reasonable — and…
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By Kevin E. Noonan — The Federal Circuit affirmed a judgment of invalidity based on obviousness in a decision rendered in Prometheus v Roxane. In doing so, the Court might also have given an indication of the types of claims for "personalized medicine" (in the form of methods for determining treatment of subsets of individuals…
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Ex parte Nathan Victor Bak, Elizabeth Baruka Silberg, Yelena Bayeva, Sukadev Bhattiprolu, And Alexis Hope Bruemmer By Joseph Herndon — The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office has likely seen an increase in the number of appealed rejections under 35 U.S.C. § 101 due to the Supreme Court's decision…
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By Kevin E. Noonan — Last week the Federal Circuit affirmed a District Court's finding of invalidity and non-infringement in ANDA litigation between Spectrum Pharmaceuticals and Sandoz. In so doing, the Court deferred to the factual determinations made by the lower court for no clear error and agreed on de novo review with the District…
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By Andrew Williams — One of the first IPR petitions ever filed, IPR2012-0006, was related to biotechnology — specifically DNA sequencing. Illumina, Inc. filed that petition, and two others, IPR2012-00007 and IPR2013-00011, against patents owned by The Trustees of Columbia University in the City of New York ("Columbia"). The PTAB issued its Final Written Decisions…
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By Kevin E. Noonan — The Federal Circuit showed once again the importance of a district court's factual findings (and the deference the appellate court gives those findings, particularly when supported by expert testimony), in InSite Vision Inc. v. Sandoz, Inc. In last week's decision in this case the Court affirmed a finding of non-obviousness…
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By Kevin E. Noonan — Earlier this month, the Federal Circuit affirmed a District Court judgment of obviousness in ANDA litigation under the Hatch Waxman Act having a long provenance of earlier litigation, in Senju Pharmaceutical Co., Ltd. v. Lupin Ltd. The case involved patentee Senju Pharmaceutical's (joined by Kyorin Pharmaceutical Co. and Allergan, Inc.)…
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By Andrew Williams — Earlier this week, the Patent Trial and Appeal Board ("PTAB" or "Board") handed down what is thought to be the first set of inter partes review ("IPR") Final Written Decisions ("FWDs") in the biopharmaceutical industry. And unlike the case of the first set of Orange-Book related FWDs (see "PTAB Update —…
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By Andrew Williams — The pharmaceutical industry has been closing watching the proceedings at the Patent Trial and Appeal Board ("PTAB" or "Board") to see if inter partes review ("IPR") will be a viable option for generic drug companies seeking to challenge Orange-Book-listed patents. On December 9, 2014, the PTAB released two sets of decisions…
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