USPTO Issues “2010 KSR Guidelines Update”
On September 1st, the Office of Patent Legal Administration (I didn’t know there was one) issued 17 pages in the Fed. Reg. (Vol. 75, 53643) updating its obviousness guidelines. (A copy of the...
View ArticleKSR Panel at AIPLA Annual Meeting
Thanks to all of you who attended (or tried to attend) the panel presentations on KSR Tuesday morning at the AIPLA Annual Meeting. We apologize, but were pleasantly surprised, that the room was too...
View ArticleIn re Glatt Air Techniques – Glatt Sailing for Applicants
In re Glatt Air Techniques, Inc. (January 5, 2011) (link below), the Fed. Cir. in dicta reminded the PTO that evidence of commercial success – unlike a showing of unexpected results –need not be...
View ArticleAIPLA Webinar on KSR Features Woessner and Lewis
On March 2nd, I will be presenting with Jeffrey Lewis of Patterson, Belknap, Webb & Tyler in an AIPLA live online seminar entitled, “KSR and the Ripple Effect: Examining the Broad and Increasing...
View ArticleInnovation Toys And Analogous Art – Defender Against Hindsight?
There is nothing particularly surprising in the recent Fed. Cir. decision of Innovation Toys v. MGA Entertainment, App. No. 2010-1290 (Fed. Cir. March 21, 2011) (a copy is available at the end of this...
View ArticleNonanalogous Art Lives! In Re Klein
Yesterday, the CAFC decided IN RE ARNOLD G. KLEIN 2010-1411, finding error in the USPTO’s rejection of patent claims based on obviousness, using non-analogous art. You may find the following useful in...
View ArticleObviousness Objections Based On Combinations Of References – Consistent...
By Paul Cole, Professor of Intellectual Property Law, Bournemouth University; Lucas & Co, Warlingham, UK Those prosecuting patent applications before the USPTO, the EPO and other examining patent...
View ArticleEurand v. Mylan –A “School Of Obviousness”
When I read the April 16th decision (App. No. 2011-1399, -1409 (Fed. Cir. April 16, 2012)) (a copy is available at the end of this post) in which a Fed. Cir. panel of Newman, O’Malley and Reyna...
View ArticleOtsuka v. Sandoz – Motivation Trumps Structure
The recent decision of the Fed. Cir. in Otsuka v. Sandoz, App. No. 2011-1126, -1127 (Fed. Cir. May 7, 2012) continues the courts admirable work in defining obviousness post-KSR. This case revisits the...
View ArticleNOVARTIS A.G. v. UOI – What is Novelty in Indian Courts?
Can everything old be made new again? Lots has been written about the Indian Supreme Court rejecting a patent application claiming a crystal modification of imatinib mesylate (Gleevec), which is used...
View ArticleK/S HIMPP v. Hear-Ware Technologies, LLC – Splitting a KSR Hair
In KSR, the Court seemed to encourage the broader use of the “logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference”...
View ArticleIgnorance is Bliss – for Teva
I did not pay much attention to the fairly recent panel decision in Bristol-Myers Squibb Co. v. Teva Pharma. USA, 757 F.3d 967 (Fed. Cir. 2014). It seemed like a fairly routine panel affirmance of the...
View ArticleD. Mass Court Extends Myriad to Peptide Panels
In a great leap backwards for patenting life sciences, Magistrate Judge Cabell invalidated claims in a number of patents licensed to Oxford Immunotec that are directed to e.g., “A kit for diagnosing...
View ArticleVanda v. Roxane Labs. – Are Two Natural Laws Better Than One?
As you will recall, in Prometheus v. Mayo, the Supreme Court held that a claim reciting a natural law had to have other non-conventional steps to pass muster under s. 101. The natural law in Mayo was...
View ArticleIn 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 ArticleNovartis AG, LTS et al. v. Noven Pharmaceuticals, Inc. – Prior Judicial...
After Novartis’ patents were found nonobvious by the Fed. Cir., affirming the Delaware District Court, defendant Noven filed for inter partes review (IPR) of U.S. Pat. Nos. 6316023 and 6335031, on...
View ArticleEx Parte Patterson: Assay Based on Two “Natural Phenomena” Does Not Equal One...
According to the “Mayo/Alice” rule, if a claim is directed to a “natural phenomena” such as the relationship between the a drug’s metabolite concentration following administration of an...
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...
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