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Category: Obviousness
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By Donald Zuhn — Last month, the Federal Circuit dismissed an appeal by Institut Pasteur of a determination by the Board of Patent Appeals and Interferences affirming the rejection of claim 14 of U.S. Patent No. 7,309,605 in an inter partes reexamination requested by Precision BioSciences. The Federal Circuit also reversed the Board's affirmance of…
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By Andrew Williams — When does a prior art disclosure of a concentration range of a medicament render obvious the use of a species that falls within that range, when that same use was also known in the prior art? After all, common sense should dictate that if the same drug were used in the…
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By Donald Zuhn — On November 22, the Federal Circuit reversed a determination by the Patent Trial and Appeal Board affirming the rejection of the claims 1, 8-11, and 14 of U.S. Application No. 11/145,716 as anticipated by DE Patent No. 10053155 A1 ("Jungkeit") and as obvious in view Jungkeit and U.S. Patent No. 6,107,349. …
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By Andrew Williams — Last week, the Patent Trial and Appeal Board ("PTAB" or "Board") issued the first inter partes review opinion in case IPR2012-00001, Garmin USA, Inc. (Petitioner) v. Cuozzo Speed Technologies LLC (Patent Owner). In what is being considered good news for parties wishing to challenge the validity of patents at the Office,…
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By Donald Zuhn — In an appeal decided last month, the Federal Circuit reversed and remanded a decision of noninfringement by the District Court for the District of New Jersey with respect to U.S. Patent No. 7,524,834, and affirmed the District Court's finding of obviousness with respect to U.S. Patent No. 6,598,603. The panel also…
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A Little Reminder to the PTO about Due Process and the Importance of Objective Evidence of Non-Obviousness By Alison Baldwin — In its decision on September 24th, the Federal Circuit reminded the Patent Office that the principles of due process are still alive and kicking and cannot be ignored by the Patent Office's judiciary. The…
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By Kevin E. Noonan — The Federal Circuit revisited the extent of the safe harbor from the judicially created doctrine of obviousness-type double patenting carved out by 35 U.S.C. § 121 in St. Jude Medical, Inc. v. Access Closure Inc. Unlike earlier decisions regarding whether continuation or continuation-in-part applications could benefit from the safe harbor,…
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By Kevin E. Noonan — The Federal Circuit's jurisprudence regarding obviousness as determined by the U.S. Patent and Trademark Office continues its post-KSR development in Leo Pharmaceutical Products, Ltd. v. Rea, which involves an obviousness determination by the Office in an inter partes reexamination. The Court reversed the Office's obviousness rejection as a matter of…
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By Andrew Williams — A claim term that can have different meanings or values depending on the method used to measure it renders the claim indefinite because it is impossible for a potential infringer to discern the boundaries of the claim. This is because it is not possible to determine whether potential infringing activity will…
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By Kevin E. Noonan — Ever since the Supreme Court handed down its decision in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), both the U.S. Patent and Trademark Office and the courts have found it easier to render a decision that a claimed invention was obvious. While how the USPTO and the…
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