Patent Law Weblog
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- 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)
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Category: Obviousness
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By Kevin E. Noonan — Summary judgment, while clearly advantageous, requires that there be no disputed question of material fact and that the moving party is entitled to judgment as a matter of law. When a district court grants judgment improvidently, by misapplying the law, judgment can be reversed and the matter returned to the…
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By Donald Zuhn –- Last month, in Boehringer Ingelheim Pharmaceuticals Inc. v. Mylan Pharmaceuticals Inc., the Federal Circuit reversed a decision by the U.S. District Court for the District of New Jersey finding certain claims of U.S. Patent No. 8,853,156 to be directed to ineligible subject matter under 35 U.S.C. § 101, and remanded for…
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By Kevin E. Noonan — The Federal Circuit affirmed the Patent Trial and Appeal Board's (PTAB) claim construction (and inter partes review (IPR) decision invalidating claims for obviousness) in it recent Genentech, Inc. v. Iancu decision, and also had the occasion to review and affirm the Board's procedure-based denial of patent owner Genentech's motion to…
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By Kevin E. Noonan — Ever since the Supreme Court's decision in Dickinson v. Zurko, patent applicants (and with the advent of inter partes review proceedings before the Patent Trial and Appeal Board, patentees) have found it difficult to overcome Patent Office determinations of obviousness, due to the deference to factual issues the Zurko case…
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By Kevin E. Noonan — Last week, the Federal Circuit affirmed invalidation of claims to methods for reducing Protein A leaching in affinity column chromatographic methods important inter alia in purifying monoclonal antibodies, in Genentech, Inc. v. Hospira, Inc. In doing so, the panel majority (over a dissent by Judge Newman) illustrated anew the importance…
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By Kevin E. Noonan — It seems that memes can be as compelling in the law as in social media, and the meme of the moment in patent law is inherency, particularly as applied to obviousness determinations (see, for example, Persion Pharmaceuticals LLC v. Alvogen Malta Operations Ltd.; Acorda Therapeutics, Inc. v. Roxane Labs., Inc.). …
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By Kevin E. Noonan — Last week, the Federal Circuit affirmed a District Court decision (by Circuit Judge Bryson, sitting by designation) in an ANDA litigation, finding obvious claims asserted for treating patients having mild to moderate hepatic impairment with extended release opioid formulations, in Persion Pharmaceuticals LLC v. Alvogen Malta Operations Ltd. In reaching…
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Federal Circuit Upholds Invalidity of Video Game Patent Despite Board's Incorrect Claim Construction By Joseph Herndon — CG Technology Development, LLC (CG Tech) appealed the Patent Trial and Appeal Board's Final Written Decision holding that the claims of U.S. Patent RE39,818 would have been obvious. The Federal Circuit found that even though the disputed limitations…
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By Donald Zuhn — Today, in Merck Sharp & Dohme Corp. v. Wyeth LLC, the Federal Circuit vacated and remanded two final written decisions by the U.S. Patent and Trademark Office Patent Trial and Appeal Board finding claim 18 of U.S. Patent No. 8,562,999 to be nonobvious. The '999 patent, which is directed to formulations…
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By Kevin E. Noonan — The Federal Circuit earlier this week affirmed a District Court's decision invalidating almost all of the claims asserted against an ANDA filer, in HZNP Medicines LLC v. Actavis Laboratories UT, Inc. Nevertheless, because a claim was held invalid and infringed, the proposed generic compound is delayed from coming to market.…
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