In re NuVasive, Inc. – Explain Yourself!
In re NuVasive Emphasizes the Importance of Reasoning in the Obviousness Question. Since KSR, 127 S.Ct. 1727 (2007), repudiated as “rigid and mandatory” the Federal Circuit “rule” for obviousness –...
View ArticleEx parte Galloway – Two Correlations are Better than One
Although, somehow, examiners and PTAB Judges are supposed to refrain from considering anticipation or obviousness when evaluating claim elements for the “inventive step” required for patent...
View ArticleUCB, Inc. v. Accord Healthcare, Inc. – Can a Racemic Mixture be a “Lead...
UCB v. Accord, Appeal no. 2016-2610 et al. (Fed. Cir., May 23, 2018) may be headed to the Supreme Court, which prompted me to take another look at this opinion. This was a decision in Hatch-Waxman...
View ArticleKumar v. Iancu – The Dangers of an Overstuffed Preamble/Note on 37 CFR Part 4.
On November 7, 2018, the Fed. Cir. issued a summary affirmance of the PTAB’s interference decision of September 6, 2016, in Kumar v. Sung (Patent Interference 14/322,039) which found that the claims of...
View ArticleNovartis v. Breckenridge: Obviousness-Type Double Patenting Explained
Without trying to summarize this well-written opinion by Judge Chen, I simply recommend that you store it somewhere and pull it out when you have a tricky obviousness-type double-patenting situation...
View ArticleNovartis v. West-Ward – Lead Compound Analysis v. Motivation to Combine
In Novartis Pharm. v. West-Ward Pharm., Appeal no. 2018-1434 (Fed. Cir., May 12, 2019), a three judge panel of Stoll, Plager and Clevenger affirmed the district court’s ruling that the claims of...
View ArticleOSI v. Apotex – Christmas in October!
In OSI v. Apotex, Appeal no. 2018-1925 (Fed. Cir., October 4, 2019), the panel reversed the PTAB and found that the method of treatment claims in U.S. Pat. No. 6,900,221 were not obvious over a primary...
View ArticleChemours Co. v. Daikin Industries – Back to Some IP Basics
After trying to untie the Gordian knot of patent eligibility, it is almost IP comfort food to read a Fed. Cir. decision that deals with obviousness. In Chemours Co. FC, LLC v Daikin Industries, Ltd.,...
View ArticleStrathclyde v. Clear-Vu – A Class in Obviousness
In fact, it was Clear-Vu that got “schooled” in the law of obviousness, but this case would be a good teaching—or review—article for anyone on this subject. I admit, it was refreshing to re-read some...
View ArticleAlmirall v. Amneal Pharmaceuticals – Negative Limitations II
This post gets a “Part II” designation because the Fed. Cir. clarified the support necessary to find a negative limitation in the prior art (Almirall LLC v. Amneal Pharmaceuticals LLC, Appeal No....
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