Patent Law Weblog
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Category: Obviousness
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By Michael Borella — On February 27, 2024, the U.S. Patent and Trademark Office published its Updated Guidance for Making a Proper Determination of Obviousness ("Guidance") in the Federal Register. The stated goal of the Guidance is: To provide a review of the flexible approach to determining obviousness that is required by KSR Int'l Co.…
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By Kevin E. Noonan – One of the most notable consequences (intended or not, for good or ill) of the Leahy-Smith America Invents Act (AIA) has been the possibility (now likelihood, if only in frequency) that the decisions of the Patent Trial and Appeal Board and district courts will be different (typically to the detriment of patent…
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By Kevin E. Noonan – Although merely exemplifying the burden imposed on an appellant by the Federal Circuit's substantial evidence standard of review over decisions by the U.S. Patent and Trademark Office regarding the facts underlying legal decisions on obvious, an inter partes review of patents directed to capturing feral pigs provides enough of a curiosity to…
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By Kevin E. Noonan – The Federal Circuit dismissed an appeal from an unsuccessful challenger in an inter partes review (IPR) proceeding based on failure to satisfy the standing requirements for appeal in Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, Inc. The case arose in an IPR over U.S. Patent No. 10,149,820, directed to compositions and methods for…
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By Kevin E. Noonan — There has been some comment in certain quarters regarding the recent penchant for the Federal Circuit to issue Rule 36 summary affirmances instead of full-fledged opinions as had been the Court's practice for much of its 40-year existence (see, e.g., D. D. Crouch, Wrongly Affirmed without Opinion, 52 Wake Forest…
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By Kevin E. Noonan — In those (in retrospect) halcyon days more than a decade ago (before Mayo, Myriad, Alice, and the subject matter eligibility quagmire arose), perhaps the most significant Supreme Court decision was KSR Int'l Co. v. Teleflex Inc. (2007), where the Court addressed the proper standard for determining obviousness for the first…
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By Kevin E. Noonan – The Federal Circuit reviewed the latest decision from the Patent Trial and Appeal Board (PTAB) in an inter partes review that claims 3-6 and 10 of U.S. Patent No. 6,548,019 are obvious, in Rembrandt Diagnostics LP v. Alere, Inc.; prior proceedings were reported at Alere, Inc. v. Rembrandt Diagnostics, LP, 791…
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By Kevin E. Noonan – The Patent Trial and Appeal Board (PTAB) has benefited, particularly after enactment of the Leahy-Smith America Invents Act, from the deference to its factual findings mandated by the Supreme Court's interpretation in Dickenson v. Zurko of the application (deferential for factual determinations) of the standard-of-review provisions in the Administrative Procedures Act. …
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By Michael Borella — Establishing a prima facie case of obviousness based on a multiple prior art references generally requires that the references teach or suggest all claim elements and that one of ordinary skill in the art would be motivated to combine the references to achieve the invention as claimed. During patent prosecution, rebutting…
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By Kevin E. Noonan – The Federal Circuit provided a reminder last week that merely identifying an unappreciated consequence of a prior art method cannot confer non-obviousness on practice of methods that did not acknowledge that consequence, in In re Couvaras. The appeal arose from a Patent Trial and Appeal Board affirming an Examiner's rejection that…
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