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.
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...
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...
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...
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...
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 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...
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...
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...
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...