Contemporary Evidence Beats Google Obviousness Challenge

The Federal Circuit recently upheld two patents against an obviousness challenge by Google. (Google v. At Home Bondholders Liquidating Trust (Fed. Cir. 2018).) This case demonstrates the importance of contemporary evidence to supp… Read More

Distribution Agreement held to be “Offer for Sale”

The Federal Circuit held a distribution agreement including transfer of title to the distributor and exclusivity in the United States for three years to be an “offer for sale” under the on-sale bar. In The Medicines Company v.… Read More

Patent That Survived Alice Is Not Obvious

A little less than a year after finding that claims of U.S. Patent No. 6,474,159, directed to an inertial tracking system, were patent-eligible under the Alice abstract idea test, the Federal Circuit has affirmed a decision of the… Read More

Patent Eligibility and Obviousness in a Covered Business Method Patent Review

The limits of patent eligibility continue to be a major hurtle for patent owners whose patents are subject to Covered Business Method Patent Review (CBM) at the USPTO’s Patent Trial and Appeal Board (PTAB). In IBG LLC v. Trading… Read More

Low Bar for USPTO to Show Motivation to Combine

A recent Federal Circuit case illustrates perils of trying to show that patent claims are non-obvious by arguing that references would not have been combined.  In Bosch Automotive Service Solutions. LLC v. Matal, No. 2015-1928 (F… Read More

When Is Hindsight Impermissible in an Obviousness Rejection?

According to the PTAB, impermissible hindsight can be found in an obviousness analysis that modifies a reference without providing a rationale for such modification independent of the patent sought to be invalidated. In Apple Inc.… Read More

Federal Circuit: No “Teaching Away” Without Discouragement

The University of Maryland Biotechnology Institute (“Maryland”), owner of U.S. Patent No. 6,673,532 B2 (“the ‘532 patent”), recently lost the ‘532 patent when the United States Court of Appeals for the Federal Circ… Read More

CAFC Affirms PTAB Claim Construction of “Connected”

In Ignite USA, LLC. V. Camelback Products, LLC., No. 2016-2747 (Fed. Cir. Oct. 12, 2017), the Federal Circuit upheld the PTAB’s inter parte review claim construction that the claim term “connected” does not require a permane… Read More

Motivation to Combine References Need Not be Explicit

How much motivation do you need to combine references to make something obvious? According to the Federal Circuit, enough to reasonably discern a proper path to combine the references. In Cablz, Inc. v. Chums, Inc., No. 2016-1823… Read More

Patent Prior Art and the Necessity Requirement for Inherency

A patent claim limitation can only be inherently disclosed by patent prior art when such limitation is necessarily a component of a disclosed subject matter. In Southwire Co. v. Cerro Wire LLC, No. 2016-2287 (Fed. Cir. Sept. 8, 20… Read More

Upcoming Webinar

Peter Keros of Bejin Bieneman PLC will cover approaches to responding to Office Actions during patent prosecution. Topics discussed will include: Interviews with Examiners Why to interview with Examiners When in prosecution can you have an intervie…Register