Updated Guidelines on What Is "Obvious" Reflect an Updated PTO

By Bruce D. Sunstein , a member of our Patent Practice Group On September 1, the United States Patent and Trademark Office issued updated guidelines for use by patent examiners in determining when the subject matter claimed in a patent application should be rejected for being obvious. The updated...

Patents Post-Grant: Secondary Considerations Rebut Obviousness Finding

Rare Victory in Patent Reexamination Since the amendment of claims is not practical in many instances during patent reexamination (due to intervening rights ), declaration evidence is much more common in patent reexamination as compared to patent application prosecution. A common form of declaration...

In re Kao -- A Ray of Hope in a Post-KSR World

In this Commentary, Robert T. Burns and Laurie A. Axford focus on the Federal Circuit's holding and rationale in In re Huai-Hung Kao , 2011 U.S. App. LEXIS 9729 (Fed. Cir. May 13, 2011) [ enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law...

Prognosis Indeterminable: How Patent Non-Obviousness Outcomes Depend Too Much on Decision-Makers

By Benjamin H. Graf J.D. with Intellectual Property Concentration, 2010, Benjamin N. Cardozo School of Law; B.A. in Physics, 2005, Boston University Excerpt from Prognosis Indeterminable: How Patent Non-Obviousness Outcomes Depend Too Much on Decision-Makers , 9 Cardozo Pub. L. Pol'y & Ethics...

Fitch, Even, Tabin & Flannery LLP: Federal Circuit Clarifies Procedure for Nonobviousness Analysis

By Calista J. Mitchell In a decision dated April 16, 2012, the Court of Appeals for the Federal Circuit issued an important ruling on obviousness analyses in patent litigation. In In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation , the Federal Circuit clarified that the...

Troutman Sanders LLP: Litigation and Reexamination Lead to Different Results in Patent Case

By Dabney Carr In a precedential decision on May 17, the Federal Circuit affirmed the PTO's rejection in reexamination of patent claims on the grounds of obviousness even though the Court had previously affirmed a district court's judgment as a matter of law that the same claims were not obvious...

Fitch, Even, Tabin & Flannery LLP: Travel Caddy Wins Federal Circuit Reversal of Inequitable Conduct and Obviousness Rulings

Recent Success Fitch Even attorneys recently won several key issues in an appeal at the Court of Appeals for the Federal Circuit. The firm was retained as appellate counsel after proceedings in the district court had led to rulings that the asserted patents were invalid, unenforceable, and not...

Sheppard Mullin Richter & Hampton LLPS: Inventions In Unpredictable Fields -- Not Always Unobvious

On Sept. 21, 2012, a three-judge panel of the Federal Circuit in In re Droge (2011-1600) [ enhanced version available to lexis.com subscribers ] held that the claims in U.S. patent application serial no. 10/082,772 (the '772 application"), directed to a method of recombining DNA in eukaryotic...

Congressman Goodlatte Proposes to Codify Obviousness-Type Double Patenting

by Courtenay C. Brinckerhoff As I wrote previously, Congressman Goodlatte (R-Va.) released "a discussion draft " of patent reform legislation on May 23, 2013. Although the stated purpose of the draft legislation is to "address the ever increasing problem of abusive patent litigation...

Fitch Even IP Alert: Narrow Species Claim Is Invalid for Double Patenting Over Prior Broader Genus Claim

The judicially created doctrine of obviousness-type double patenting is intended to prevent a patentee from obtaining multiple separate patents for inventions that are not patentably distinct. On August 21, the Court of Appeals for the Federal Circuit decided the case of AbbVie Inc. v. The Mathilda and...