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Obviousness

PTAB / Federal Circuit / Obviousness / PTAB Procedures and Rules

To avoid running afoul of the APA, patent owners must be permitted to respond to “new” grounds of unpatentability

In In re: NuVasive, Inc., the Federal Circuit vacated and remanded the Board’s final written decision in IPR2013-0508 for further proceedings. At issue was the Board’s reliance on a prior art figure that was first raised in petitioner’s reply and which the Board did not permit the patent owner to address in the preceding. In […]

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PTAB / Federal Circuit / Obviousness

On remand, PTAB says it did consider an exhibit submitted to show the “state of the art”

In a decision on remand issued on August 15, 2016, a PTAB panel again found patentable claims 1-30 of Verinata Health’s U.S. Patent No. 8,318,430, directed to methods for determining the presence or absence of fetal aneuploidy in a fetus. This time, the PTAB specifically addressed the applicability of an exhibit to the state of the art, responding […]

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PTAB / Federal Circuit / Obviousness

Obviousness at the PTAB: Use common sense with care.

On August 10, 2016, in Arendi v. Apple et al., the Federal Circuit reversed a final written decision in which the PTAB held that claims were unpatentable as obvious, finding that the PTAB had improperly relied on common sense to fill a gap in the primary prior art reference. The court acknowledged that, post-KSR, common […]

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PTAB / Obviousness

Obviousness prior art: From many comes one?

On July 27, 2016, the PTAB issued five written decisions finding all claims of six patents assigned to Jazz Pharmaceuticals Inc. unpatentable. Each of the patents related to tracking and controlling the distribution of sensitive prescription drugs that have the potential to be abused, misused, or diverted. An interesting aspect of these decisions is the collective […]

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PTAB / Federal Circuit / Obviousness

Put it all in the Petition, and with particularity. PTAB authority is limited to unpatentability theories spelled out with specificity in the petition.

On July 25, 2016, the Federal Circuit reversed a PTAB finding of unpatentability because the decision was based on unpatentability theories never presented by the petitioner and that were not supported by the record. In re: Magnum Oil Tools Int’l, No. 2015-1300 (Fed. Cir. July 25, 2016). The proceeding began when McClinton Energy Group filed […]

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