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

Analogous Patent Prior Art from Different Field of Endeavor?

If you are trying to disqualify a prior art reference as non-analogous in either patent prosecution or litigation, here is a case to remind you of limitations of such arguments. In Smartdoor Holdings, Inc. v. Edmit Industries, Inc… Read More

IPR Petitioner Must Establish References are Patents or Printed Publications

In Xactware Solutions, Inc. v. Pictometry Int’l Corp., No. IPR2016-00593, Paper 45 (PTAB Aug. 28, 2017), the Patent Trial and Appeal Board held Xactware did not establish that a document was a printed publication under 35 U… Read More

CAFC Affirms PTAB Construction of “Connected to a...Network”

Based on a plain and ordinary meaning – and the patentee’s clear statement in distinguishing prior art during prosecution – the Federal Circuit affirms PTAB finding of invalidity of patent claims predicted on a construction… Read More

On-Sale Bar and the AIA: New Language, Same Meaning

Despite a change in statutory language, the applicability of the on-sale bar to pursuing patent rights under the America Invents Act (AIA) is unchanged from prior law, said the Federal Circuit in Helsinn Healthcare S.A. v. Teva Ph… Read More

Online Listing = Offer for Sale for Patent Infringement?

Robert Blazer sued eBay alleging that a product listed by an eBay seller was liable for patent infringement (directly, contributorily, and by inducement).  eBay successfully moved for summary judgment on the ground that it had n… Read More

Upcoming Webinar

We are delighted to kick off the first B2 IP Webinar of 2019 with David Hannon, Of Counsel at Bejin Bieneman, who will provide an outline of issues for decision by a US brand owner in its pursuit of trademark protection in China. Mr. Hannon will dis…Register

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