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Process Step Order Cannot Save Claim with Conventional Manufacturing Steps From Obviousness

On October 26, 2017, the Federal Circuit, in a split decision, upheld the invalidity of the asserted claims of U.S. Patent No. 6,486,150 (“the ’150 patent”) as obvious under 35 U.S.C. § 103. See Merck Sharp & Dohme Corp. v....more

All Claim Limitations Must be Shown for Derivation Under 35 U.S.C. § 102(f) And Obviousness

Introduction - In proving a patent invalid (or infringed), all claim limitations must be considered. A recent case illustrates this maxim for both derivation under 35 U.S.C. § 102(f) and obviousness under 35 U.S.C. §...more

Federal Circuit Sends Verinata Patent Back to PTAB – The Import of Background Prior Art In Supplying The Requisite Motivation To...

On November 16, 2015, the Federal Circuit vacated and remanded a Patent Trial and Appeal Board (PTAB, also the “Board”) inter partes review (“IPR”) decision holding that a prior art reference, though not identified as an...more

Federal Circuit Affirms Invalidity and Non-Infringement of Patent for Compound Used to Ameliorate Effects of Cancer Treatment

On October 2, 2015, the Federal Circuit affirmed a district court’s holding (1) that a substantially pure compound would have been obvious when a lesser pure compound (“the 50/50 mixture”) and the pure compound were known in...more

District Court Upholds Food Effect Limitation Inherency After Remand From the Federal Circuit

In December of last year, the Federal Circuit vacated and remanded the U.S. District Court for the District of Maryland’s (“the Court”) decision finding U.S. Patent No. 7,101,576 (“the ‘576 patent”) invalid as obvious. See...more

Federal Circuit Provides Plain Language Test for Analogous Art

Whether or not a prior art reference constitutes “analogous art” for purposes of an obviousness inquiry under 35 U.S.C. § 103 has been the subject of debate in many instances. On July 28, 2015, the Federal Circuit, in Circuit...more

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