Posts Tagged: "obviousness"

Hindsight bias, the phenomenon that things seem more predictable and obvious after they have occurred, is one of the most widely-studied “decision traps” in psychology… Patent litigation plays right into such human limitations, which affect judges and jurors alike. Patents are often litigated many years after the invention was made, and very often those who are accused of patent infringement will argue that the invention was obvious at the time it was made and a patent was applied for… And we accept a surprising amount of other conjecture in this analysis. For example, judges and jurors are told about a contemporaneous hypothetical person that – despite having only ordinary skill in the relevant technology – would have had super-human knowledge of all then-existing technical information, was fluent in every language under the sun, and would have done insane things to access information sources.

Join Gene Quinn, founder and president of IPWatchdog.com, for a free webinar discussion on responding to obviousness rejections and convincing examiners there is more to the claimed invention than the sum of its parts. Joining Gene will be John White, patent attorney and procedure expert.

The Federal Circuit recently reversed a Patent Trial and Appeal Board (“Board”) inter partes review decision on nonobviousness, holding that the Board erred when it did not require Synvina, the patent owner, to come forward with evidence of nonobviousness (e.g., teaching away) once DuPont, the petitioner, established the prior art disclosed an overlapping range for a claimed result-effective variable. See…

Last week the Patent Trial and Appeal Board (PTAB) entered a final written decision terminating an inter partes review (IPR) proceeding that had challenged a patent owned by technology licensing company Kamatani Cloud. According to the PTAB, petitioner Unified Patents failed to show by a preponderance of evidence that any of the challenged claims of the patent were invalid on obviousness ground under 35 U.S.C. § 103. “We are delighted with the PTAB’s decision in this matter,” Shanahan said. “The Kamatani Cloud patent survived the validity challenge presented by Unified Patents and its beneficiary members with all 41 claims emerging intact.”

The Federal Circuit reversed the District of Delaware’s decision to invalidate Orexo’s opioid treatment patent as obvious because obviousness was not proved by clear and convincing evidence. Specifically, the Court pointed to the absence of a teaching in the prior art that citric acid could serve as a carrier particle for the drug agonist.  The Court also noted that the lower court improperly discounted evidence of objective indicia of nonobviousness.

The United States Court of Appeals for the Federal Circuit recently issued a ruling affirming a district court’s finding that certain pharmaceutical patent claims owned by Acorda were invalid due to obviousness over the prior art.  The patents’ claims covered a species of a genus taught by the prior art.  The invalidity determination hinged on (1) whether claiming the same concentrations as the prior art, but for a different indication would be obvious to a person having skill in the art; and (2) whether secondary considerations such as solving a long-felt need demonstrated nonobviousness… Strong objective indicia such as solving a long-felt need may be insufficient to prove nonobviousness when a blocking patent deters others from an improvement.

It is irresponsible for adults to give children who fail to complete their work credit based on the excuse that the children could have, should have, would have completed their assignments. It is much more inequitable for the U.S Patent Office to deprive inventors of the credit they deserve (in the form of patent allowances) because some conjured up combination of disconnected individuals—who have little, if any, temporal or linguistic ability to communicate with one another—could have, should have, would have eventually produced the claimed invention.

In order to establish that the commercial success factor supports a non-obviousness finding, the patentee must establish that a connection (or nexus) exists between the novel aspects of the patent claim(s) and the alleged commercial success. Id.; WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1330 (Fed. Cir. 2018). In other words, the patentee must show that the novel aspects of the claim(s) are driving sales and not aspects of the claim(s) that were known in the prior art. In re Huai-Hung Kao, 639 F.3d 1057, 1069 (Fed. Cir. 2011); WesternGeco, 889 F.3d at 1330. In cases brought pursuant to the Hatch-Waxman Act, while there are exceptions, it is most common that patent challengers’ arguments focus predominantly or entirely on an alleged lack of nexus given the substantial sales typically enjoyed by the brand-name drug products that are the subject of such litigation. Though it bears noting that the mere fact that a company is pursuing a generic version of a brand-name drug, by itself, does not support a “commercial success” finding. Galderma Labs., Inc. v. Tolmar, Inc., 737 F.3d 737, 740 (Fed. Cir. 2013).

The focus of the appeal is the need for clarity with respect to hopelessly irreconcilable caselaw on the issue of single reference obviousness… Decisions from the Federal Circuit have created an irreconcilable split within the Federal Circuit itself regarding the proper approach to obviousness determinations, American Vehicular Sciences argues. Indeed, many commentators (ourselves included) have noticed that now more than ever on a variety of issues the outcome of a decision at the Federal Circuit is completely dependent on the panel assigned to the case. While that has been a criticism of the Federal Circuit for some time, it increasingly seems outcomes are arbitrary, capricious and wholly unpredictable— at least until you know who the judges are who will decide the case.

MPEP 2141 actually cites to Arendi, but then quotes the case entirely out of context. This is a worrisome problem that can be found in many parts of the MPEP, which makes the MPEP a useful reference tool to find relevant cases, but as useful as an opponent’s brief when it comes to accurately characterizing the holdings of decisions. For example, MPEP 2141 actually cites Arendi for the proposition that common sense can be used to supply a missing limitation from the prior art in an obviousness rejection. That, however, is the exact opposite proposition for which the case actually stands.

On August 1st, the non-profit inventor advocacy group US Inventor filed an amicus brief with the Court of Appeals for the Federal Circuit asking the court to grant a petition for en banc rehearing in American Vehicular Sciences LLC v. Unified Patents Inc. The case, which stems from the Patent Trial and Appeal Board (PTAB), involves issues regarding obviousness which US Inventor argues that the Federal Circuit should resolve through the en banc rehearing of this case… This uncertainty in determining the validity of an invention disincentivizes small inventors from taking risks and experimenting to create an invention at a time when the United States is facing an innovation crisis. US Inventor notes that China has been outpacing the U.S. in terms of startup funding for artificial intelligence developers and that patent applications filed in China has been outpacing U.S. patent applications at a rate of about 2-to-1.

On Friday, August 3rd, the Court of Appeals for the Federal Circuit issued a precedential decision in JTEKT Corporation v. GKN Automotive, which dismissed an appeal stemming from a trial conducted at the Patent Trial and Appeal Board (PTAB) where two of seven challenged claims were upheld as not unpatentable. The Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Timothy Dyk and Kathleen O’Malley found that appellant JTEKT lacked the standing required to appeal the case because it couldn’t prove an injury-in-fact required for standing.

The United States Patent and Trademark Office (USPTO) provides invalidity tools via inter partes review (IPR) and post-grant review (PGR), but which route is better? …  PGRs are estimated to cost more because of their broader discovery rules.  If cost is a major factor, IPRs are a less-expensive option due to restricted allowance of discovery, the most expensive aspect of patent litigation… If the invalidating arguments or art are not strong, an IPR may be a better option due to its lower threshold for institution.  The same prior art arguments that failed in a petition for a PGR may have succeeded in an IPR petition due to the lower standard.

How much is needed to reasonably prove obviousness? In UCB, the majority found UCB, Inc.’s asserted claim nonobvious under non-statutory double patenting.  The dissent, however, found overwhelming evidence in support of obviousness.  The majority determined that prior art teaching was insufficient for a skilled artisan to have a reasonable expectation of success.  To the dissent, however, the majority’s analysis was flawed because it ignored the fact that the law required only a reasonable expectation of success, not a guarantee.  One might say the majority viewed the glass as half full and the dissent half empty. 

The sole question on appeal was whether it would have been obvious to make zolmitriptan into a nasal spray. The Federal Circuit agreed with the district court that the prior art taught away from formulating zolmitriptan for intranasal administration.