Category Archive: Obviousness

Nov 29

Federal Circuit Broadly Affirms PTAB’s Determinations on Analogous Art, Motivation to Combine References, and Obviousness of Claims

The level of deference the Federal Circuit gives to the Board’s IPR decisions has been surprising to many practitioners, considering the Court’s reputation for reversing district court decisions.  The trend of deference to the Board continues, as illustrated in Unwired Planet, LLC v. Google Inc., 2015-1810, -1811, Nov. 15, 2016. Unwired involved one patent, U.S. …

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Sep 01

PTAB Reversed Based on Non-Analogous Art Theory

Although In re Natural Alternatives LLC (Fed. Cir. August 31, 2016) is not an IPR appeal, it should be of interest to those who care about IPRs and PGRs because it reflects a successful appeal from the Patent Trial & Appeal Board (PTAB) involving the fairly rare issue of non-analogous art. Natural Alternatives (NA) owns US …

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Aug 16

“Substantial Evidence” Hurdle is Substantially Difficult to Overcome

One of the less appreciated hurdles to a successful appeal of a Final Written Decision in an IPR proceeding is the “substantial evidence” standard of review the Federal Circuit applies to the Graham factors that underlie a determination of obviousness.  Although the ultimate determination of obviousness is a legal issue subject to de novo review, the …

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Aug 11

PTAB Reversed–Common Sense Improperly Used to Supply Missing Limitation in Obviousness Inquiry

In a rare rebuke of the PTAB’s discretion, the Federal Circuit has outright reversed a finding of obviousness based on the Board’s misapplication of the law on the permissible use of “common sense” in an obviousness analysis.  The case, Arendi S.A.R.L. v. Apple Inc., Google Inc., and Motorola Mobility LLC (Aug. 10, 2016) involved a …

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Aug 05

Federal Circuit Provides Ammunition to Patentees In Magnum Decision

Patent Owners gained a bit of a reprieve in the Federal Circuit’s recent decision in In Re Magnum Oil Tool Int’l, Ltd., decided on July 25, 2016. In several key respects, Patent Owners regained some footing in the otherwise daunting IPR process. As an initial matter, in one of its first post-Cuozzo (Supreme Court edition) decisions, the …

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May 19

PTAB Reversed for Failing to Explain “Why” a Person of Skill Would Modify the Prior Art

It is no secret that patent owners have, on average, struggled at the PTAB over the last three and a half years.  Some practitioners say that a reason for this result is that the Board many times takes an aggressive approach in the assessment of “obviousness” under Section 103.  Yesterday, the Federal Circuit issued its …

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Feb 23

Federal Circuit Issues a Rare Reversal on Behalf of Patent Owner in IPR

Yesterday, the Federal Circuit decided five appeals from as many IPR’s filed by Patent Owner PPC Broadband involving claim construction issues, most of which were decided in PPC’s favor. In a first appeal (2015-1364) taken from IPR2013-00342, the court agreed with PPC and held that the Board’s construction of “reside around” was unreasonably broad because …

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Jan 14

“Obvious to Try” Rationale Insufficient to Institute IPR Trial Directed to Venlafaxine

The rate at which the Board denies inter partes review petitions has been climbing in recent months, and will be helped along by the Board’s denial of review in Neptune Generics v. Auspex Pharm., IPR2015-01313.  Neptune Generics filed a challenge to Auspex Pharmaceuticals’ patent no. 7,456,317, which covers a “deuterated form of venlafaxine, an inhibitor …

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Dec 22

PTAB Rejects Challenge to Onglyza® Patent

The lower burden of proof associated with inter partes reviews should make IPRs attractive to generic pharmaceutical companies, but even with that lower burden, success is not guaranteed, as illustrated by IPR2015-01340.  Mylan Pharmaceuticals challenged AstraZeneca’s patent RE44,186 on saxagliptin, the active ingredient in Onglyza® (used to treat type 2 diabetes).  Mylan’s petition argued the …

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Nov 09

Lessons Learned from a Rare CAFC Opinion on an IPR Matter

To date, the Federal Circuit has issued Rule 36 affirmances in over 80% of the cases it has heard. Thus, when a new, substantive opinion is issued by the Court, it is an opportunity to learn. On November 5th, the Federal Circuit issued an opinion in Belden Inc. v. Berk-Tek LLC, relating to the Final …

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